Patent Drafting

Drafting patent applications is the heart of what I do.  A well drafted patent application not only describes your invention, but provides many different ways of drawing the critical distinction: the distinction between things that include your contribution to the art and things entirely within the scope of the prior art (all that came before you).

A good patent application provides the foundation for advocating for your patent grant.  Some practitioners will argue that one never knows what prior art the Examiner will find and what arguments you will face in trying to get your patent allowed.  After more than ten years practice, I find I can usually anticipate the major issues that will arise.  By anticipating the major issues and deciding in advance what arguments I will want to make to meet them, I can draft your patent application to include statements that are helpful and avoid statements that could be used against you.

Introductory books on drafting patents put all their emphasis on being broad.  Inexperienced patent attorneys draft applications as if to support claims broader than will conceivably be allowed.  While it goes without saying that you want to claim your invention as broadly as you can, overly broad description is not helpful and can be counterproductive.  Describing your invention in a way that is so broad as to encompass the prior art can become problematic later when you need to explain why your invention is distinct from the prior art.  When drawing distinctions, it is better to err on the side of breadth, but it is best not to err at all.

A patent gives the owner the right to exclude others from practicing within the scope of the patent’s claims.   But a patent does not automatically confer on the owner the right to practice the invention.  A good patent gives the owner exclusivity for a range of products and services for which there are no equally good alternatives.  A focus on the business lines for which exclusivity is sought makes for a better patent application.

My process generally begins with a description of the invention.  The description can be brief.  If I am new to the technology, or some part of it, I generally do background research.  The idea is to limit the amount that the inventors need to explain.  When I interview the inventors, I want the focus to be on their contribution.

Whether or not I have been hired to do a patentability study, I will generally research the prior art.  Knowing the prior art is invaluable when drafting a patent application.

Drafting the application generally begins with drafting a set of claims.  The broadest claims are independent claims.  I will also draft the narrower dependent claims.  For each dependent claim, I will have in mind a situation where I can argue the dependent claim is patentable even though the independent claim is not.

The drawings and detailed description follow.  The description elucidates every term used in the claims and clarifies how those terms are meant to be interpreted.  The description will also provide and support alternative terms that can be used should it later appear that an alternative term will better serve.  The description will identify at least one advantage for the invention, but not necessarily every advantage.  Describing too many advantages makes it easier for an examiner to identify a rationale for asserting it would have been obvious to make the invention.  For each dependent claim limitation, the description will generally provide an additional advantage unique to processes or products within that subset.

I can do this work on hourly billings or for a flat fee.  The flat fee basis is generally reserved for clients who provide regular work.  Those clients also get the best rates.