Posts Tagged: "Patent Drafting"

Working with Patent Illustrations to Create a Complete Disclosure

What you are looking at here is something that is similar to a Big Mac because it has two beef patties, which are identified by reference numeral 10. It isn’t quite a Big Mac through because there is no special sauce, and there are tomatoes 18 added. Having a drawing like this makes it easy to describe the hamburger, but it also makes it easy to describe more than what is shown in the drawing. Allow me to illustrate. In a patent application you might describe this drawing as follows…

Don’t be Fooled, Drafting Patents is Complicated

I understand it is prudent to proceed with care and not needlessly waste money, which is why I try and help inventors understand how best to start the patent process on a budget, but a couple hundred dollars is not really a budget. You might as well go to Vegas and put it all down on black and let it ride. At least you have close to a 50% chance, which is a greater chance of success than having only a few hundred to spend on your invention. Inventors really need to know and fully understand that there is a big difference between inventing and describing an invention. For well over 100 years courts have marveled at how difficult it is to draft a patent application.

Patent Pricing – You Get What You Pay For

It takes time to prepare a detailed written disclosure that will support any number of claims, and there is just no way to rush it. Inventors and entrepreneurs intuitively know this, but still some get lured into believing that what they get for $1,200 is just as good as what they would get if they paid $8,000, which is unrealistic of course. You should not fall for what you want to hear when you deep down know it makes no sense. If you aren’t convinced ask yourself this: When you were in school and you had to write a paper for a grade, was the resulting paper better if you spent more time or less time working on the project? The reality is the more time you have to spend the better the work product. If you are not paying very much then you realistically cannot expect the same number of hours, nor can you expect the same level of quality.

Building Better Software Patent Applications: Embracing Means-Plus-Function Disclosure Requirements in the Algorithm Cases

The disclosure requirements for these types of patent applications has been a moving target for years, which means that whatever the most stringent disclosure requirements are should become the target regardless of the types of claims you file. To ensure your software patent application has appropriate disclosure of the invention you should accept — even embrace — the requirements for having an appropriate means-plus-function disclosure. By meeting the strict standards set forth in the mean-plus-function algorithm cases you will file more detailed applications that have better disclosure and which will undoubtedly support more claims, thus making the resulting patent or patents more valuable.

Addressing Cheap Shots and Inaccuracies from Hal Wegner

It has come to my attention that earlier today in his e-mail newsletter Hal Wegner has once again attempted to take a cheap shot at yours truly. Yes, I know that truth and accuracy are not the hallmarks of Hal’s newsletter, and normally I do look the other way when I learn of cheap shots by Hal, which are a dime a dozen. When Hal challenges my business and makes blatantly inaccurate statements I do find it necessary to respond.

Patent Drafting: Describing What is Unique Without Puffing

Although a patent application is not a sales pitch per se, most inventors will find it quite helpful to list as many descriptive objectives of the invention as is possible. As a general rule you should, however, stay away from laudatory language and puffery (e.g. “the best gadget known to man” or “the perfect solution” or “using this tool is unquestionably the choice any professional would make”). When you puff the tendency is to skimp on the descriptive details, which are essential to an appropriate patent application. Further, is anyone really likely to take your word for it being “the best”? That is why infomercials demonstrate the functional capabilities of an invention. In a patent application you need to describe the functionality and leave the selling to the salespeople later.

A Primer on Indefiniteness and Means-Plus-Function

The basic law relative to § 112, ¶6 explains that a decision on whether a claim is indefinite under § 112, ¶ 6 requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Traditionally, claim terms are typically given their ordinary and customary meaning as understood by one of ordinary skill in the pertinent art. The question with means-plus-function claiming, however, is whether evidence from that mythical individual skilled in the art is even admissible. No structure in the specification means the person of skill in the art cannot save the disclosure by understanding. Thus, means-plus-function claims are largely valid at the mercy of a federal judge who in all certainty is not one of skill in the art and who likely has an aversion to such claiming techniques because they prefer dealing with tangible structure.

Patent Claim Drafting: Improvements and Jepson Claims

But how do you go about patenting an improvement? The first thing you must do is figure out what the advantages are over the prior art. You need to take a critical look at your own invention and identify that which distinguishes it over the prior art. You should absolutely focus on structure, not on the method of use. Differences in the method of use will only come into play if you are claiming a new and nonobvious method of using, which is typically not the case. In the overwhelming majority of cases you want to protect the device or apparatus, which makes use differences irrelevant.

Reviewing a Patent Application Drafted by an Inventor

With all of this in mind, like many others I tell inventors that if they are going to do it themselves they should consider getting a patent attorney to review their application before they file. Having said that, it is unrealistic to believe that a patent attorney can review what you have done in 1 hour or less. Furthermore, it is foolish to believe that an application reviewed for 1 hour or less will result in a work product that will be as good as if it were drafted by the patent attorney in the first place. If you want to do it yourself and have a qualified, experienced patent attorney review your work you should budget at least 6 to 10 hours of their time to review everything, critique what you have done and provide feedback and guidance for you to continue to build upon.

Patent Prosecution Across the AIA Divide: Warning to Patent Practitioners – Special Care is Needed to Avoid Legal Malpractice

Therefore, returning to my hypothetical inquiry above, assume a continuation is filed on or after March 13, 2013, but is accomplished in such a manner so that its does not qualify to be treated as a patent application under current law. This means, as a consequence, that if, for example, the parent application when originally filed relied upon the one year grace period or if someone else files a patent application describing the subject matter of the invention before the filing of the parent application (but otherwise was not the “first to invent”), the claims of the continuation will be rendered unpatentable. Furthermore, since it would have been possible to file the continuation in a manner so that current law continued to apply even after March 13, 2013, one might imagine that a patent prosecutor in this situation may be subject to liability and/or perhaps a bar complaint. If I now have your attention, continue reading, because this situation can take place much more easily than I certainly would have imagined.

Patent Drafting: Drilling Down on Variations in a Patent Application

One of the challenges that a drafter faces when trying to satisfy the enablement requirement is with respect to describing things that can and will vary depending on the circumstances. What you want to do is follow up by explaining the various permutations to help the reader more readily understand what facts, choices or circumstances will have impact.

An Introduction to Patent Claims

Why are we talking about this in a claims primer? There is a difference between adding what we call “new matter” and adding patent claims. New matter, which is prohibited, is defined by first viewing whatever is present at the time of the original filing of the patent application. In determining the breadth of what is covered by that initial patent filing you rely not only on the description contained in the specification and any drawings filed but also on the originally filed claims. Thus, new matter is defined in the negative. If it wasn’t there in the specification, drawings or originally filed claims then it is new matter. If it was present somewhere in what you filed it is not new matter.

Patenting Board Games 101

In my experience one of the things that inventors of board games frequently forget is the inclusion of alternative methods of play. Don’t just focus on the preferred method of play and preferred rules, but think about ways that the game can be modified and changed. Let me use an example from the extremely popular game Monopoly. One of the things that keep many people from playing Monopoly is the length of the game. That has lead to any number of various “house rules” to be implemented by those who love the game but want it to be played faster so the game can be completed in a reasonable time frame, or at least before everyone loses interest. So if you invented Monopoly in addition to the traditional rules you should give some thought to rules associated with accelerated play.

Why Does It Cost So Much to Prepare a Patent Application?

Outsourcing to those who speak English as a second language is extremely dangerous, and there is only so much an inexperienced patent attorney or patent agent can do without having someone more seasoned review the work and add value. We can gripe about the “good old days” or we can just realize that it takes more time and more energy to prepare patent applications then every before, and consequently more money than ideal. So if you are going to go down the patent path do yourself a favor. Either go all in and get quality or don’t bother. The half-way solution is a recipe for spending money and getting nothing to show for it in return.

When Should a Do It Yourself Inventor Seek Patent Assistance?

It is certainly true that once you file a nonprovisional patent application your ability to make additions to the application has largely ceased. Even if you are filing a provisional patent application, while you could always file another provisional patent application to correct mistakes, the first filing is only as good as what is disclosed. Taking the first filed patent application seriously and making sure it has all the necessary disclosure is absolutely critical. Therefore, having a professional review your patent application before you file is definitely wise. The question, however, is when do you seek the assistance? Frequently many inventors wait too long before they seek help, which means much of what they have done is unusable and various levels of difficult (or impossible) to work with.