Patently Strategic Podcast: Quality Patents
Is your patent application only good enough to get through the examination process? Or has it been crafted to stand the tests of time and varied audiences if you later need to assert that document against an infringer, find yourself litigating with it in an Article 3 Court at the hands of a judge and jury, God forbid, end up having to defend its validity at the Patent Trial and Appeal Board (PTAB), or even needing to use it to block pirated imports at the International Trade Commission (ITC)? The difference is often quality.
As an inventor, you cannot leave this to chance or blind trust in the wrong professional. You’ve put too much into your innovation to come up short when its life depends on the measure of your patent. In the eyes of the patent office, judges, juries, PTAB admins, ITC officials, and IP-savvy investors, it doesn’t really matter how great, novel, or universe-denting your invention is if it is not properly defined and protected by your patent.
Series Overview: Crafting Quality Patents
What goes into a quality patent, and where possible, how do you get it without breaking the bank? Answering these questions will be our focus for a good chunk of the remainder of this season. In light of all of the trap doors tied to the constraints of the English language that could exist even in a more perfect system, but especially in light of the aspects of the patent system screaming for reform, it’s important to acknowledge that as inventors and practitioners, we cannot settle for anything less than quality when it comes to our patents. We must focus on minimizing risk surface area. What’s not in our control is what the courts and Congress are up to. What is in our control is creating the highest quality patents we can under the circumstances.
In practice, this means being very intentional about things like not publicly disclosing before you file, conducting thorough prior art searches, crafting claims with clear boundaries, performing design-around exercises to draft around infringement vectors, writing enabling disclosures with limited functional language, understanding case law and aligning as closely as possible with both congressional statutes as well as court precedent, and remembering to keep patent families open with continuations. Because sometimes, the best offense is a great defense.
Silver Bullet Disclaimer
Even a perfect patent won’t necessarily save you from risks of hindsight bias, the present judicial mental illness around eligibility, or get you an injunction when you need to stop an infringer – all topics we have and will continue to discuss and aggressively fight to make better. But a well-searched, quality-drafted patent application, with an open family, will dramatically increase your odds of not falling prey to the assertion and invalidation dangers of prior art, poor claim construction, or an insufficiently enabled invention. And if done correctly, could provide you with robust downstream flexibility should case law or legislation change in unfavorable ways at some point in the multi-decade life of your patent.
Episode Overview: Drafting Quality Patents 101
We will be exploring all these practices in depth over the course of our multi-part series, but today, Kristen Hansen, Patent Strategy Specialist and Quality Guru at Aurora kicks off our series with a discussion focused especially on quality patent drafting.
Along the way, Kristen and the panel discuss:
- What do we mean when we say patent quality?
- Why is patent quality important?
- How to balance quality and budget
- The importance of searching, continuations, and draftsperson domain expertise
- Practical tips, tricks, examples, and Kristen’s Musts for drafting quality applications
Drafting Intentionally
A patent application drafted with quality in mind will provide a stronger starting block for an inventor and for a patent examiner. For instance, if the application is drafted with clarity and quality-based goals, the inventor will feel confident that the patent application covers proper innovative features, and the patent examiner will have a clear understanding of the invention before setting out to examine and search for prior art.
In addition, using time-tested, quality-laden patent drafting techniques can make a marked difference in how or if your patent will be enforceable. The most important part of a patent application is the technical aspect(s) for which protection is sought. These technical aspects(s) include the claims listed in a patent. While claims are of utmost importance, you can inadvertently damage the claims by what you include (or exclude) from the specification, including the title, the background, the summary, the brief description, and the detailed description.
Quality Drafting Goals
Patent quality can take on a few meanings depending on who is assessing a patent or at what stage they are drafting or reviewing the patent. For example, the U.S. Patent Office assesses patent quality differently than an inventor or company having to protect or enforce a patent. Depending on the lens you use to view a patent or patent application, you can look at quality in a lot of different ways, but to ensure your patent application passes muster, it should ultimately be drafted to:
- Meet statutory requirements for novelty and clarity
- Articulate the claimed subject matter clearly and comprehensively
- Hold up to challenges in lawsuits or other post-grant proceedings
- Hold market value
Drafting Tips
The panel discusses all of the following in great detail, but at minimum, you should consider these high-level tips when drafting:
- Describe every claim in the specification in full – literally and by example.
- Use proofreading software at each drafting step, but especially in claims. AI tools can help a lot.
- Avoid using patent profanity.
- Keep background sections short.
- Understand the field of prior art closest to your invention before drafting.
- Use a jury figure.
- Draft several alternative embodiments of the invention.
- Use technical problem, technical solution, and technical benefit language in strategic places.
Draftsperson Expertise
As claim and patent application drafting involves technical skill and expertise, you should aim to hire a qualified patent practitioner with expertise in drafting claims for the specific field of your invention. Part of the quality a patent practitioner can provide you has to do with their experience drafting claims and patent applications in the technology domain of your invention. If you use a practitioner who is not skilled in your technical area, be certain as an inventor to provide a lot of details and examples and proofread the application closely!
Investing in Quality
The panel has a great conversation on balancing value and quality when managing costs, but it’s also important to recognize that quality IP is an investment, and allocating funds in the right ways early can pay big dividends later. It can be expensive to pay for a quality drafted patent application, but it can be far more expensive to NOT pay for a quality drafted patent application if you end up with only a narrow claim, have very expensive prosecution costs from shortcuts taken earlier, don’t have an important future-proofing description for your invention – or you may even end up without a granted patent altogether. This investment in quality also adds value to the company, increasing the dependability and reliability of its IP rights.
Patent Profanity Dictionary
As a companion resource for this episode, we’ve also compiled a patent profanity dictionary. “Patent profanity” refers to the use of certain words that arguably limit the scope of a claim or alter the meaning because they use absolute phrasing or terms. The provided tables are not exhaustive but serve as concrete examples of terms you should never use, terms you should try to avoid, and terms that can only be used with caution if used correctly when drafting patent applications.
Discussion Panel
Kristen is joined today by our always exceptional group of IP experts, including:
Mossoff Minute: Patents and the Founders
In this month’s Mossoff Minute, in honor of celebrating America’s independence, we’re flashing back to our conversation with Professor Adam Mossoff about why patents exist, how the US system differed from all predecessors, and how the Founders’ notions of the core principles of democracy are inextricably linked with the societal good that comes from innovation and intellectual property protection. We’re also publishing excerpts as short-form videos on Instagram Reels, YouTube Shorts, and TikTok
Related Listening and Reading
To further explore the topics discussed, see the following past episodes and resources:
- Patent Profanity Dictionary. Our new guide for avoiding the use of certain words that can limit the scope of a claim or alter the meaning because of their use of absolute phrasing or terminology.
- Patent Anatomy: What’s in a patent? Deep dive guide into the parts of a patent and how they connect.
- Patent Claims: The Name of the Game. Part one of our claims series, discussing the basics of claims and claim strategies.
- Claim Construction: Building Strong Patent Foundations. Part two of our claims series, laying down the essentials of claim construction.
- CAFC Chronicles: Costly Tales of Claim Construction Fails. Part three of our claims series, analyzing key takeaways from CAFC cases with serious claim construction mistakes.
- Patent Searching: Sleuthing Your Way to Stronger Patents. The importance of searching patents and understanding the landscape.
- Patent Wars: Innovators, Revolutionaries, and the Race to Reform. A deep dive into the problems plaguing the patent world. Topics include eligibility, enablement, injunctions, and the patent troll myth.
- American Inventor Horror Story. A breakdown of the consequences of AIA and the PTAB through a wide array of personal perspectives from inventors, patent practitioners, and a former USPTO patent examiner.
