By: Katherine (Katie) McGuire, Esq., Registered Patent Attorney; Partner, Woods Oviatt Gilman LLP; Chair, Intellectual Property Practice Group
Writing patents is an art, and an evolving one at that—and it takes years, even decades, to master.
That’s why I recommend hiring a registered patent attorney or patent agent to draft your patents, which can help you avoid getting a warning from the patent examiner.* Either way, new patent drafters can shorten the learning curve by studying time-tested best practices for writing successful, bulletproof patents. Here are some of my favorite best practices.
Go Broad or Go Home
To qualify as infringement, the offending device or process must include every element recited in any one claim. So make your claims as broad as possible. Because every word introduces an element of your invention the competition can potentially eliminate or design around to avoid infringing your patent. Scrutinize to be sure there’s a reason for every word, and if it’s not essential to allowing the claim, delete it.
If only it were so easy, right?
Certainly you need to include at least one element that distinguishes the claim from the prior art, making it new compared with what went before. At the same time, don’t include any detail that isn’t necessary to describe it in the broadest sense, otherwise you introduce a needless limitation, which creates an opportunity for an infringer to escape liability by leaving it out of their competitive product or process.
Don’t Say it if You Haven’t Said It Before
Every patent must include a detailed written specification, usually drawings, and an exhaustive technical description of how the invention is made and how it works. When writing your patent claims, be sure every characteristic you claim, and every term you use, is included and explained in the specification. Because if any aspect of your claim is not described in the written specification, it could create grounds for invalidation. Even if the original patent examiner doesn’t notice and your patent is approved, a competitor may discover the lack of support in the future and could use that to invalidate the claim.
Conduct a Thorough Prior Art Search
It might feel impossible to uncover and understand all the relevant prior art, but it’s critical to the success of your patent. That’s why I recommend making your search more thorough by using several search methods—and I’m a big fan of coupling a traditional Boolean search with a semantic search.
Using both semantic and Boolean helps ensure your search includes every possible search input, including all relevant words—terms, keywords, translations, synonyms and similarities—along with relevant assignees, inventors, industries, categories and technical patent office classifications. In addition, doing the semantic search first saves time by culling the list of relevant search terms for you.
Stack Your Claims and Include Independent and Dependent Claims
The English language is not perfect and words are subject to interpretation, so the more claims in your patent, the better. For example, an independent claim may be interpreted more narrowly than what was intended, making it easier for the competition to avoid infringement. But written another way, it could be interpreted more broadly and keep the competition at a distance.
You can stack your patent with numerous claims by defining your invention in different ways using several independent claims, which stand alone, and dependent claims, which refer to and incorporate the limitations of other claims.
Think of it as a game of Jenga®: If a competitor knocks out one of your claims, you want to have built a tower of claims so that, if challenged, at least some remain standing—and hopefully cover the competitor’s device or process.
*Here’s a sample warning from a patent examiner: An examination of this application reveals that applicant is unfamiliar with patent prosecution procedure. While an applicant may prosecute the application (except that a juristic entity must be represented by a patent practitioner, 37 CFR 1.31), lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting an attorney or agent.
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