Posts Tagged: "patent claim drafting"

If you are a serious inventor you need to go to this Conference. Last year there were inventors who came to the USPTO campus for the two-day event from all over the East Coast, and those that I talked to thought it was well worth their time and money. Where else are you going to be able to meet Senior USPTO officials and talk to them one-on-one? There will be patent examiners and trademark examining attorneys present to answer your questions. Local intellectual property attorneys will give their time to participate in teaching sessions, as well as giving free consultations to attendees to answer questions. Even if you have to travel to California and stay in a hotel for a couple nights you will get far more out of the Conference than you will spend. I understand money is tight, but serious inventors, whether they are newbies or old pros, will gain a tremendous amount of valuable information and personal connections by attending the Conference.

Wherever we go we always get a number of individuals who are currently in law school, have recently graduated law school or are engineers or scientists looking to change careers. During one of the breaks between sessions on day 1 here in San Francisco one of the students taking the course asked me a question that we receive quite a lot, which is this: once I pass the exam how do I learn to actually do this? Like so many things in life experience is the best teacher, but increasingly finding a job without some experience can be extremely difficult.

Method or process claims will include active steps to achieve a certain result. In method claims the transition is typically either “comprising” or “comprising the steps of.” While legally there may be some distinction between these two different transitions, both are acceptable. It is also important to understand that each of the steps in a method or process claims use gerunds, which are a form of a verb that ends in “ing” and operates to direct the action that is to take place. Said another way, you must use “ing” words in method claims. You cannot define a method or process in the past tense.

Similarly, inventors shouldn’t be rushing out to write their own patent applications and represent themselves pro se. In fact, representing yourself in a patent application is the patent equivalent of taking out your own appendix — a REALLY bad idea. Having said that, many inventors are faced with the situation where they simply cannot afford to hire anyone to assist them. It is either go it alone or do nothing at all. In that situation the inventor is faced with a terrible dilemma. If the inventor goes into the situation understanding they are not going to get the breadth, depth and scope of rights they otherwise could get, and that is acceptable, then they have made a knowing business decision. The Libertarian in me believes that we shouldn’t say don’t do it, but the Patent Attorney in me knows that we need to be realistic about the chances of success and provide that information in a realistic way without sugar coating the reality.