In my previous ‘inventor series’ post here, I discussed some of the factors and considerations that go into an answer for the question “Should I get a patent?” In order to receive a patent, an inventor must first start with a patent application. The most important part about the patent application - that which defines the legal boundaries - is the claims. Why? Because patent infringement (or non-infringement) is based on an assessment of the claims of an issued patent. Whether it is drafting claims for a new application or amending claims after examination, how the claims are treated during the patent application process is of criticality.
In my experience, one of the most unique characteristics of an inventor is how well he/she knows the invention. That is, the inventor knows with exactness that the invention has 5 sides, 3 angles, 4 screws, 2 whatchamacallits, 1 widget, weighs 2.7 pounds, connects this to that, and is 4 inches long. But does a claim require that much precision? Not only is the answer ‘no’, but the value of any such claim can be detrimental to the patent.
Consider a pencil. An inventor might say: I invented a pencil with a lead tip. But a patent attorney has the skill and experience to reword your invention to improve the legal boundary: an elongated member having an end, the end configured to transfer a material to a medium. Notice how this new version covers things like a crayon, a pen, a paintbrush, a quill, a highlighter, and more.
At the end of the day, a good patent attorney is also a translator - he/she takes what the inventor is saying the invention is in its exactness, and converts it into its broadest form. Indeed, the U.S. Patent Office recommends filing claims in their broadest form. See MPEP 608.01 (“applicant [should] include, at the time of filing or no later than the first reply, claims varying from the broadest to which he or she believes he or she is entitled…”
But the patent attorney must (and a good patent attorney will) do more: the application should be written (translated) for an intended audience, in this case, a patent examiner. Not only should the invention be described as a pencil, since that is what it really is, but that the invention could also be an elongated member, such as x, y, and z.
How a patent application is written matters. How the invention is claimed matters. If you have an invention and have questions on how you can protect it, we can help - we offer a free consultation with an IP Specialists for generalities, or you can schedule a discussion with an attorney.
At Rao DeBoer Osterrieder, our goal is to help you understand aspects related to getting a patent so you can make the best decision possible. Give us a call - we’re happy to speak with you!
© 2017 John DeBoer
John DeBoer is a registered patent attorney, and admitted with the Texas State Bar. He is a Partner with Rao DeBoer Osterrieder, a law firm in Houston, Texas specializing in intellectual property law. Contact John via Email.
The views expressed in this article are those of the author and do not reflect the views of Rao DeBoer Osterrieder, PLLC, or any of its clients. All rights reserved.