Anything Under the Sun Made by Man

Most patents are a waste of money. Why is it that Apple and Samsung each have many thousands of patents, but when they start a patent war with each other over, they only assert a small handful of patents?

For a small business with limited resources, judiciously selecting ideas for patenting can make the difference between having a valuable portfolio and a worthless one. The key factor on the value of an idea is not the ‘coolness’ of the technology, but whether or not the industry is likely to use the technology at some point in the future. This vision is much, much wider than the typical entrepreneur struggling in the trenches to build a business.

Curating a patent portfolio requires looking past a product going into production, past the immediate, short term business goals of your business, and into the future of your industries as well as other industries.

Ask any patent attorney about patent quality and you will open a big discussion. Most of the time, you will hear the phrase “I know it when I see it”, or something to that effect.

There are some overt things that give a patent ‘high quality’. These things are things like good spelling, proper grammar, clear writing, and well done figures.

There are also the legally important aspects to writing a patent application, such as properly characterizing the invention, giving support for the claims, and good patent drafting skills.

Part of the intangible ‘thing’ about patent quality is whether or not the drafter appears to really understand the invention. With some patents, you can tell that the drafter was fishing around with no clear sense of direction and appears to be filling the page with words that somehow may relate to an invention. Other patents are clear, direct, and describe the invention in a way that you ‘know’ that they knew the technology.

But that really is not the most important part of patent quality.

I am writing this post from a faraway international airport, listening to a bad rendition of “Total Eclipse of the Heart” followed by “You Were Always On My Mind”, beginning a twenty-something-hour-long journey home from a set of patent disclosure meetings. I do not get fully reimbursed for my travel expenses, nor to do I get reimbursed for the travel time, jet lag, or other inconveniences. I could just as well take the disclosures using a fancy web conferencing system, and I could save a lot of time and money, but I feel that it is worth doing.

There is a very big benefit to meeting the inventors on their own turf. Part of the experience is seeing where they work, smelling the air, tasting their food, and getting to know them in ways that does not happen over the phone.

The most important aspect of writing a patent application is communication. My primary job is to learn the invention. Part of that is working with the inventors to understand what is important about it and what is optional. This process often involves some critical analysis of their invention. Sometimes, I have to call their baby ugly to delve into the critical elements of the invention. This cannot happen without the inventor’s trust in me.

I have heard from large companies that they are reluctant to take on solo practitioners because they do not know if the solo will be around for the long haul. In other forms of law, such as family law or criminal law, the cases may span a few months. But in patent law, a case may take five to seven years to go from application to issue. In patent law, the longevity of the solo is a big issue, especially for larger companies.

When I respond to an Office action from the Patent Office, I can usually recall many of the details of a case, even though I wrote the case several years ago. When I draft a patent application, I ask for a lot of background information which includes the long term direction for the product we are protecting, the competitive landscape, and other related patent applications that are being filed. This type of information is not written into the text of the patent application, but is part of the context in which I write the application.

Doing an Office action on that patent application three years later, I can generally recall the circumstances of our original filing. Because I have that continuity, I can respond to the Office action appropriately with a response that meets the client’s business goals.

How does a client know that I am going to be here for the several years it will take to obtain a patent?

In preparing a patent application, the figures are one of those things where the patent attorney can add considerable value to the patent when the end uses of the patent are taken into consideration. This requires that the patent attorney/agent understand the business goals of the client, and construct the patent application to align with those business goals.

The importance of good figures cannot be understated.

I mean good figures in terms of design and quality, but especially design.

Figures are required “where necessary for the understanding of the subject matter to be patented.” (35 U.S.C. 113) This definition is the minimum necessary, but meeting the minimum standards does not necessarily add value to the client.

In reality, the figures are used by everybody who touches the patent application, patent publication, and issued patent. These people include the client and the examiner, as well as potential infringers, juries, potential licensees, potential purchasers, and investors. A well designed set of figures allows the patent to tell a story: a story that may be different for each of the potential parties.