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Patent Review and Stronger Patents
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While investigating clients' patents to see if they can be circumvented by the competition, we have learned a few things about writing stronger patents. Here are some general thoughts.
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1. Do I really need to use a patent attorney to write my patent?
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Yes! This can cost upwards of $5000 to $15,000. But if you want to save some money, it is possible to write the main body of the patent, do a good job on the drawings and take a first draft stab at the claims. Then, have an attorney write the claims. They should also review your writing in the body of the patent and the drawings. You can get some good advice on writing patents and on the drawings requirements in books from Nolo Press (www.nolo.com). These are probably available at your local library.
To write a better patent, you should also have read and understood several patents in the field of your invention. You will need to do this anyway to searchfor prior art patents. Take note of how they phrase the claims and how the body of the patent relates to the claims. Follow our patent links for the USPTO and FreePatentsOnLine to search for patents on-line.
If you just want the prestige of having a growing patent portfolio, but don't really intend to defend a particular patent, it is possible to do the whole process yourself. Books from Nolo Press above will walk you through the process. When making the decision to prosecute the patent yourself, consider the cost of your time. You will have to do great deal of research to determine how to properly write and file the patent. If you are a consultant charging a similar hourly rate as the patent attorney, your lost revenue from the patent investigation time can greatly offset the attorney's fees. However, if you plan filing additional patents in the future, you should look at this time as an investment.
That said, it is still best to have an attorney review any patent before filing!
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2. Patent Claims are Strange and Hard to Understand
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Yes they are. The claims are very tricky to write and read. A missing word, or replacing a word with a seemingly similar one, can render a claim useless. Here are some interesting observations about claims that might help make them easier to read and to write.
First of all, there are method patents and apparatus patents. What are you patenting? Perhaps you are patenting both. For example you have a method (e.g. an optimization routine) that will be implemented in hardware (e.g. custom circuitry in an IC chip). For this reason, some claims seem to be repetitive. Take note that one set of claims may be for the method and the other for the apparatus.
Another reason claims may appear repetitive is that some are independent and others dependent. Often you will see a claim that is basic and stands on its own (independent). Then there will be a series of claims that build on this independent claim by saying something like "same as Claim with the addition of . . ." These are dependent clauses. Attorneys are great at writing these. Read a few patents and notice how they build the complexities and feature sets slowly, one-at-a-time, to give you the best coverage and defensive position possible.
You will find some strange sounding wording in the claims. This is largely because there is legal precedence for using these words. That is, they have been used in the past and interpreted in known ways. Therefore, the attorneys have confidence in using them again because they have a better chance at predicting how a judge may interpret the claim.
Here are a few interesting word subtleties that may make your claims reading easier: "said" means "the." For example, "sit in said chair" means "sit in the chair." The word "plurality" means "more than one." The phrase "comprised of" means "includes." This is in contrast to "consists of" which means "only." If your claim is that something is comprised of 3 elements, other elements may also be present. If your claim is that something consists of 3 elements, there are only those 3 elements present.
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3. If the Claims are so Important, are the Abstract and Body Just Filler?
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NO! In the body you must demonstrate the best method for implementing your patent. The patent is supposed to teach the world how to build and use your invention in the best way possible. For example, keeping the best settings for your invention secret might weaken your protection. In exchange for sharing your knowledge, you get the protection of the patent. Further, the abstract and the body text show your intent. Someone may later find an entirely new use for your invention in another field. Unless you note this somewhere, typically in the body text, your patent may be interpreted as limited in scope and so not cover the new application.
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4. Does a Patent Give Me the Right to Make My Invention?
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NO! It gives you the right to exclude others from making the invention. An illustrative example that we like to use is this. Suppose someone invents and patents a car,
comprised of a body, wheels, engine, transmission, brakes, seats, steering wheel, etc. Now, suppose you want to patent a car with windshield wipers. If your patent is granted, you can stop people from making cars with windshield wipers but you can't make a car with windshield wipers because you don't have the car patent. The win-win solution is to license your patent to the holder of the car patent or cross-license the car patent yourself and start making cars with windshield wipers.
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AND REMEMBER: Don't take our word for it! Seek competent professional legal advice.
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