- A great invention can still be spoiled by a poorly drafted patent application or by errors made during patent prosecution, making counsel’s competence as important as the invention itself.
- Skilled patent counsel needs to understand how the Patent Office examines applications, how courts later interpret patent claims, and how competitors are likely to try to design around the patent.
- Having reviewed many drafts from other firms, the author notes that a single poorly chosen word, or a failure to address the true crux of the invention, can cost clients significant money and frustration and yield a low-value patent.
- One major cause of defective patents is inexperience with prosecution; another is failing to build strong supporting arguments into the application from the very start.
- The firm’s approach is to “begin with the end in mind,” embedding arguments into the patent draft from the outset so they’re readily available when negotiating with an examiner, aiming for faster, lower-cost allowance.
Material adapted from Patent Offense: 7 Steps to a Safe, Secure Patent Portfolio by: Craige Thompson.
A great invention can be spoiled by a bad patent application, or by errors and oversights made during patent prosecution. For patent counsel to best serve the client, counsel must understand how the Patent Office examines applications, and develop the patent with deliberate foresight.
A good patent attorney has the acumen to know what to do and what to avoid during the back and forth arguments with the Patent Office.
They understand how courts interpret patent claims, and they recognize the strategies your competitors will use in order to design around your patent.
In reviewing countless patent drafts sent to us from other firms, we have deep insight into how others draft patents. In some cases, one word can often make the difference. A poorly chosen word or the utter failure to address the crux of the invention can cost the client a lot of money and frustration in the Patent Office, and ultimately yield a low value (or worse) patent. The cost of this lost opportunity falls squarely on the client.
Inexperience with patent prosecution is one cause of a defective or worthless patent. Another cause is when patent counsel has not learned how to sow the seeds of success into the patent draft from the start, so that there will be high quality ammunition to use in prosecution.
That is why we begin with the end in mind. We try to sew these arguments into the fabric of the patent draft so that when we file the patent application, they are there—and when we have to fence with the examiner, we are able to draw upon these materials that were there from the start to try to get quickly to an allowed patent.
This comprehensive preparation is part of the secret to getting high quality patent applications quickly through the Patent Office with minimal cost and minimal back and forth with the Patent Examiner.
