Patents: A Most Difficult Legal Instrument to Draft



An updated version of this article is available at:




Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

6 comments so far.

  • [Avatar for Sherey]
    May 24, 2010 03:38 pm

    Wonderful article – I worked six years as a clerk at a patent law firm in Munich, Germany, and have been a freelance German-to-English translator for the past 12 years. Roughly 75% of my jobs are patent-related documents. Even given the fact that I have almost two decades of solid knowledge of how specifications, claims and features are drafted and worded, I would never attempt filing my own patent or trademark. I love the do-it-yourself appendectomy analogy!

  • [Avatar for Gene Quinn]
    Gene Quinn
    June 2, 2009 12:54 pm


    If you would like to take an excerpt and provide a link back to my site that is fine, but I would prefer you not copy and repost the entire article.

    Thanks for reading


  • [Avatar for KrisBelucci]
    June 1, 2009 08:52 pm

    I really liked this post. Can I copy it to my site? Thank you in advance.

  • [Avatar for Thomas Sutrina]
    Thomas Sutrina
    May 6, 2009 11:51 am

    About 15 yrs ago I wrote and filed for a patent. I did not go through. At the time I knew a co-worked that was in the process of becoming a patent attorney and three other engineers that also were new or working on being attorneys. They suggested writing my own. I suspect they would not suggest that now. It was a great learning experience. I can now read claims and understand them and some of the approaches used to create the web of combinations used to extend coverage and block holes.

    Would I suggest writing my own patent. I would suggest you do your own search on the google and then the us patent office site. I would suggest that your read and even diagram the claims of the patents closes to your invention. I would even suggest that you sit and outline and then write claims and then write the supporting descriptions. You have done your patent homework.

    With some idea about the coverage you would have you can determine the value of the patent and the value of the product. What barriers to entering the market exist that you have get over and does your patent place a high barrier for your competitors? To obtain funding knowledge about the barriers to enter the market and the customer size and reason they will purchase your product will be use to create the elevator one minute pitch and the ten slides of a twenty minute pitch and ten minute question period.

    I would suggest getting a patent attorney involved. Now you are in a position to know if the attorney has enough knowledge in the area of your patent to be the proper person. You are now in a position to ask very good questions. You in a position to evaluate the final claims he or she generate. And hopefully the work you have done will decrease the time (dollars) spent by the attorney on your invention.

  • [Avatar for Gene Quinn]
    Gene Quinn
    May 5, 2009 01:38 pm

    Thanks for the comment John. I probably should have made mention of the fact that you routinely joke about the personality of patent attorneys during the PLI patent bar course, and that it is all done in good fun. Patent attorneys are challenged in many ways. As I always say, we have the double whammy of being lawyers and scientists, so we are hardly the life of the party. But ask a question at a cocktail event regarding an obscure Federal Circuit decision and everyone has an opinion. I love it!

    I hope all is well. See you in NY next week for the start of our summer run of patent bar review courses.


  • [Avatar for john white]
    john white
    May 5, 2009 01:21 pm


    Inasmuch as I am mentioned, I’d thought my 2 cents might be tossed in. Patent attorneys are, far and away, the most trained, knowlegeable, and competent professional service providers extant. Their threshold of professional ability exceeds the medical and accounting and general legal communities by a wide margin. No other profession requires constant adherence to law (as written and interpretted in muliple venues), rules of practice in multiple forums (PTO, Dist. Cts., and CAFC), technical savvy across multiple disciplines, foreign rights protection in each country where rights may exist, and, all the while carrying absolute liability for error. I challenge anyone in any discipline on this assertion.

    So, you think you can do it yourself? By even pondering the question, you underscore your ignorance of what it is you’re attemping. Can you save money by providing good materials with which the patent attorney can work, yes! (See Invent + Patent system and don’t be lazy.) But, do not read a book, take a course, and then write an application that you expect will be worth anything. The greater likelyhood is your self-taught efforts will have a rather significant negative impact on value because you will, with certain publication, have eliminated all other forms of protection that cost nothing and forfeited all foreign rights to boot!

    If you’re serious about harvesting the value of any invention, start by finding a patent attorney or firm that you can work with and afford.