Tag: Practical Tips for Patent Drafting

Don't Write Patents that ‘Hide the Ball’

I had a telephone interview with a patent examiner last week and in the course of the interview, the examiner said that he really liked my patent application because I did not try to hide the ball with the invention.

I was originally taught to write patent applications by obfuscating the invention. Specifications were required to include all of the information that was claimed, and the way I was taught was to include all kinds of details of the invention without any overview or ‘big picture’ context. The specification was merely a bag of parts from which you could write claims. There was never any structure to the parts, or even a paragraph that described the context of the invention.

The bag-of-parts types of specification was in response to an overreaction to a misinterpretation of some court cases at the time. For example, KSR was generally interpreted to hold that if the applicant provided a ‘reason’ for combining two elements into an invention that the invention could then be ‘obvious’. As part of the response, patent drafters quit including a ‘story’ of the invention in the specification. When taken to its overreaching conclusion, drafters began to remove any overall description of the invention at all, and just included the detailed elements.

Obfuscating the invention is a clever tactic when the patent attorney does not know anything about the technology or does not want to bother to figure it out.

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Writing a Good Patent Application

I do all my work on a fixed fee basis. This means that I do piece work and that I have an incentive to work as efficiently as possible.

Working efficiently does not mean sacrificing quality. I recently received comments from two inventors that said “I’m thrilled by the document’s clarity and thoroughness” and “It seems you have been able to make it almost from a single shot. It is one of the cleanest apps written that I have seen.”

I have been tweaking my patent writing technique over the last few years to whittle away the inefficiencies and improve quality at the same time.

The single most important thing in writing a patent application is for the attorney to understand the invention. If the attorney does not understand the invention and appreciate the subtle nuances of the technology, the attorney cannot write a good application.

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Inventor Grandiosity: Dealing with the Kitchen Sink Invention

This post is part of a series of posts relating to inventor interviews. Other posts include The Art of the Disclosure Meeting, Doing the Disclosure Meeting, Setting the Stage and Issuing Warnings, and Inventor Myopia.

During the invention disclosure meeting, I can count on running into the Kitchen Sink Invention at least once in five inventions. The Kitchen Sink Invention is the result of grandiose expectations of the invention or extremely overbroad view of the invention. The Kitchen Sink problem is the inverse of the myopic inventor.

The Kitchen Sink Invention is the one that is so broadly defined that it does everything. Interestingly, I run into the Kitchen Sink Invention occasionally with software engineers, people with marketing perspectives, early stage entrepreneurs, and independent inventors.

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Setting The Stage and Issuing Warnings for the Invention Disclosure Meeting

This is part of a series of posts that deal with Invention Disclosure Meetings. The first one discusses the Art of the Disclosure Meeting and the second talks about Doing the Disclosure Meeting.

I like to start my disclosure meetings by covering a few important areas.

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Doing the Disclosure Meeting

This is the second in a series of posts regarding the patent disclosure meeting. Here is the first.

Every patent agent/attorney does their disclosure meetings differently. I like to do my meetings in person. There is nothing like being in the same room as the inventors, drawing on a white board, and reading those unspoken but noticeable body language cues.

The disclosure meetings always seem to go better when it is in person. I think there are several variables at play.

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The Art of the Patent Disclosure Interview

One of the most rewarding parts of patent law is the disclosure interview. This is where a good patent agent/attorney can add value far in excess of the fees collected.

A good disclosure interview is an opportunity to shape the invention into something that makes sense for the business as well as sets the proper expectations for the inventors. A good disclosure meeting is also brutally exhausting if done well.

I do all of my patent cases for a fixed fee. Because of this, I need to be efficient and thorough at every step. I view the disclosure interview as the most essential step that helps me do the highest quality work for a reasonable price.

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Patent Strategies in Light of the New Rules

The latest rules from the US Patent and Trademark Office are quite sweeping. The new rules have several facets. On one hand, the PTO is limiting the number of continuation and continuation in part applications, as well as requests for continued examination (RCE). On the other hand, the PTO is limiting the number of claims you can have by forcing the applicant to file an Examination Support Document if you exceed the claims.

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Patentably Defined

I try to avoid discussing other blogs in my blog, mostly because I like to focus on writing content. However, I ran across Patentably Defined, a blog written by patent prosecutor Michael Kondoudis. Mike’s deep understanding of patent prosecution comes out in practical, easy to implement tidbits.

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Would the Outcome of Microsoft v. ATT Been Different if a Beauregard Claim Had Been Used?

There are many reviewers and pundits who have discussed the recent Supreme Court case of Microsoft v. ATT, which dealt with a patent that Microsoft admitted to contributory infringement. This meant that Microsoft’s software enabled someone else to infringe, but that Microsoft itself did not directly infringe. The question was whether or not Microsoft was to be liable for infringement outside the US because Microsoft sent master copies of infringing software overseas for copying and foreign distribution and whether that action amounted to infringement.

The court decided that Microsoft was not liable because Microsoft did not export the copies of Windows installed on the foreign made computers. Instead, Microsoft supplied a master from which copies were made.

This is a very, very fine distinction.

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Prohibited Words in a Patent – "Prior Art"

One of the Prohibited Words is the phrase “prior art.” There is no reason whatsoever for the words “prior art” to appear in any patent application. Making any characterization of prior art is opening an avenue for attacking an issued patent and may unnecessarily complicate patent prosecution.

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