Sometimes, the technology is very, complicated, and the patent application will reflect that. But when the document is virtually unintelligible, the value is severely discounted.
Unintelligible patents are the hallmark of patents written by someone who does not understand the invention or by someone who wants to make the patent so obtuse that they need to go to court. In either case, the patent does not have much value.
Many inventors boast that they did not understand their patent application because their attorney used “legalese.” Some even joke that it was so dense that they did not even know if their invention was in there.
Make no mistake about it: a good patent is easy to read. It is difficult to write a clear description, and it takes ingenuity, thoughtfulness, and a big effort (read: motivation) to fully understand the invention, digest it to its essence, and write a clear description.
The key to good writing comes from sixth grade book reports: clear topic sentences for every paragraph, clear and simple sentence structure, and direct, active voice whenever possible.
Why does it hurt a patent when it is badly written? The first and foremost way it hurts is that the attorney did not understand the invention and probably made omissions or errors in describing the invention, not to mention the problems with examination and assertion that were covered elsewhere in this book.
Many people might say that they are not a technical or legal expert and incorrectly assume that they should not understand the patent. This is not true.
Patents are business documents that are read and understood by real people, not attorneys. When the patent is litigated, the patent is read by a judge and jury, who are common, ordinary people. If a normal person cannot understand the patent, neither can they.
For badly written patents, the risk factors include a higher possibility of Inter Partes Reexamination (IPR) reversal, difficulty of licensing or selling the patent, and general uncertainty about what the patent actually means. Discounting for all those risks, a badly written patent may have no value whatsoever.
The best way to show that a patent has value is to have the examiner consider lots of prior art during the examination. In the US, we have the opportunity to send a list of patents, websites, scientific papers, and other documents for them to consider.
A patent with five references cited, all of which were found by the examiner, is a patent that is very weak and has a higher likelihood of being overturned by Inter Partes Reexamination.
A patent with twenty, forty, even 100 patents and prior art cited, is a patent that just “feels” strong.
Patents with lots of cited references are worth much more than those with few references.
One of the easiest ways for infringers to challenge an issued patent is through the Inter Partes Reexamination process, commonly known as IPR. To successfully challenge a patent, someone has to produce a prior art document that would have changed the examiner’s mind.
The prior art can come from anywhere. A classic example is some dusty master’s degree thesis that sits on a dusty shelf of some foreign university.
The toolset used by examiners includes incredibly powerful search systems, but these are understandably focused on patent prior art and much less on scientific papers and websites, although these types of prior art are cited from time to time.
How to make a patent immune to Inter Partes Reexamination?
The best way is to get as much relevant prior art in front of the examiner and let them consider all of it. If a patent may be challenged by someone in the market based on their existing products, make sure the examiner has documentation about that product.
One of the reasons why people don’t do this is because they are afraid that their patent would not be granted if the examiner looked at all the prior art.
A startup wants the patent challenged as much as possible through the examination period. The more prior art considered by the examiner, the stronger that patent will be – and the less likely that it will be challenged by IPR.
When patent due diligence includes analyses of competing products and potential licensees, use that information to find documentation about competing products and send those to the examiner.
One quick way to assess patent quality is to look at the list of cited prior art for an issued patent. If there are only 4-5 references, all with little stars indicating that they were cited by the examiner, there is a good chance that a searcher could find something to challenge the patent for an IPR proceeding. If there are lots of references, especially non-patent references that show competitor’s products, the patent is probably very strong.
Please note that there are ways to game the system. Some people cite lots and lots of useless and irrelevant references in their cases. Even if the references are irrelevant, the resulting patent is much more impressive with the references, and it will score higher in the automated scoring systems that some big companies use to assess patent value.