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Preparing the Patent Application
A patent application can be a very difficult document to
write. Besides needing to learn the
technology of the invention quickly, the patent attorney has to remain proficient
in the relevant laws, many of which are frequently changing. Because the law may change even between the
time that the application is filed and the time that substantive examination
begins, the patent attorney needs to constantly review the changing law to gauge
as well as possible what constraints may be in place later and to determine how
to write the application in view of the possible constraints.
I write this section of the primer to help you prepare the information you will need to give to your patent attorney. Also, I want you to be aware of some of the issues the patent attorney addresses and some of the considerations the patent attorney must make.
The first step for you is to prepare for the initial communications with the attorney. These communications may begin on the telephone or by email before the first face-to-face meeting, and there may be follow-up emails and phone calls afterward.
The Initial Attorney/Client Conference
During the time it takes to draft the patent application, which can be a couple weeks to a couple months, you will likely need to speak with your patent attorney multiple times. A good rapport is important, because the free flow of information will enable the patent attorney to obtain all information he needs. Accordingly, you should insist that your firm permit you to communicate directly with the particular patent attorney drafting the application, as communication through a “middle man” causes delays and increases the likelihood of misunderstandings.
Obviously, the patent attorney needs information about the invention, but sometimes less obvious is how much information, what type of information, and how to provide the information. The attorney is responsible for guiding you throughout the discussions. Some details that may seem unimportant to you may be very important for legal reasons.
For example, if you are filing your patent application in the U.S., you must disclose the “best mode,” that is, the way you subjectively believe is the best way to practice your invention. If the U.S. government is to give you a temporary right to exclude others from practicing your invention, in return you must provide the best mode. If you conceal it, a court can later rule that your patent is unenforceable.
As another example, for patenting the subject matter of some technologies, your patent attorney needs to know if you “owe allegiance” to the State of Israel, for example, as an Israeli national or permanent residence. For such technologies, you are not allowed to apply for a patent outside of Israel unless either the Minister of Defense has provided written permission for the foreign filing or six months after filing the application in Israel the Minister of Defense did not prohibit the foreign filing.
Obviously, the attorney needs to understand the invention well to comply with the myriad patent laws. Be prepared to discuss with the attorney how your invention is made and used and what makes it better/different from the closest prior art technology of which you are aware. If you commissioned a prior art search, discuss the results with the patent attorney, explaining how your invention differs from the prior art. It is also very helpful to provide to the attorney a written explanation, whether it is short or long. Models are nice, if available, but not always necessary.
You may benefit from discussing your business goals with your attorney. For example, for your attorney to advise as to where to file your patent application, he should know about your manufacturing plans, your market, and your competition. He also needs to know whether you currently need a more quickly granted patent or a stronger patent, as working toward one goal may inadvertently affect achieving the other goal. It may be worthwhile to work toward both goals by filing two applications.
You are part of team with the patent attorney combining your technical expertise and knowledge of your business with his expertise in patent laws. Do not restrain the flow of information. With such information, the attorney can draft the patent application as suits you best.
The Claims
The claims describe, in words, what your patent, if granted, would cover and what it would not cover. (An infringement analysis is not a comparison of an accused device to a drawing from a patent.) The base filing fee for a patent application in the U.S. includes the option to file twenty claims at no additional charge, and I usually file all twenty. An invention can have multiple aspects, and even one aspect can usually be described well in multiple claims. The patent attorney must think very carefully about the wording of the claims, because even one poorly-chosen word can make the difference between a court holding infringement or non-infringement.
Depending on the invention, a claim may describe it implemented as an apparatus/device/product, a method, or a composition of materials. Claims may use terminology to express an element as a means or a step for fulfilling a function. I do not work with pharmaceutical or chemical inventions, so I usually draft claims for apparatuses and methods, and often I use “mean-plus-function” terminology for some – but not all – claims. The scope of the claims I draft include the broadest I believe are allowable (based on the prior art of which I am aware) and more narrow claims. The object is to describe the invention in many ways, because it is not possible to know which claims would be the most effective after the patent is granted.
Drafting a proper claim is not straightforward, and it takes years of practice and following the changing law to determine what should work best. An effective claim may look quite different from how you would describe your invention in a sales brochure, so do not be alarmed if you do not immediately understand a claim as soon as your patent attorney presents it to you. The claims should become clearer to you as your attorney discusses their meaning and scope with you.
After sufficient discussion between you and your patent attorney, the claims will be set as the basis for preparing the specification. As the specification is being written, the claims may change somewhat, but a "close-to-final" version should be ready before starting to write the specification.
(I acknowledge that some patent attorneys write the specification before drafting the claims. Because the specification needs to be written to support the claims, I believe it is better to draft the claims first to know what the specification will need as its contents to provide the proper support.)
The Specification
[To be written next]
I write this section of the primer to help you prepare the information you will need to give to your patent attorney. Also, I want you to be aware of some of the issues the patent attorney addresses and some of the considerations the patent attorney must make.
The first step for you is to prepare for the initial communications with the attorney. These communications may begin on the telephone or by email before the first face-to-face meeting, and there may be follow-up emails and phone calls afterward.
The Initial Attorney/Client Conference
During the time it takes to draft the patent application, which can be a couple weeks to a couple months, you will likely need to speak with your patent attorney multiple times. A good rapport is important, because the free flow of information will enable the patent attorney to obtain all information he needs. Accordingly, you should insist that your firm permit you to communicate directly with the particular patent attorney drafting the application, as communication through a “middle man” causes delays and increases the likelihood of misunderstandings.
Obviously, the patent attorney needs information about the invention, but sometimes less obvious is how much information, what type of information, and how to provide the information. The attorney is responsible for guiding you throughout the discussions. Some details that may seem unimportant to you may be very important for legal reasons.
For example, if you are filing your patent application in the U.S., you must disclose the “best mode,” that is, the way you subjectively believe is the best way to practice your invention. If the U.S. government is to give you a temporary right to exclude others from practicing your invention, in return you must provide the best mode. If you conceal it, a court can later rule that your patent is unenforceable.
As another example, for patenting the subject matter of some technologies, your patent attorney needs to know if you “owe allegiance” to the State of Israel, for example, as an Israeli national or permanent residence. For such technologies, you are not allowed to apply for a patent outside of Israel unless either the Minister of Defense has provided written permission for the foreign filing or six months after filing the application in Israel the Minister of Defense did not prohibit the foreign filing.
Obviously, the attorney needs to understand the invention well to comply with the myriad patent laws. Be prepared to discuss with the attorney how your invention is made and used and what makes it better/different from the closest prior art technology of which you are aware. If you commissioned a prior art search, discuss the results with the patent attorney, explaining how your invention differs from the prior art. It is also very helpful to provide to the attorney a written explanation, whether it is short or long. Models are nice, if available, but not always necessary.
You may benefit from discussing your business goals with your attorney. For example, for your attorney to advise as to where to file your patent application, he should know about your manufacturing plans, your market, and your competition. He also needs to know whether you currently need a more quickly granted patent or a stronger patent, as working toward one goal may inadvertently affect achieving the other goal. It may be worthwhile to work toward both goals by filing two applications.
You are part of team with the patent attorney combining your technical expertise and knowledge of your business with his expertise in patent laws. Do not restrain the flow of information. With such information, the attorney can draft the patent application as suits you best.
The Claims
The claims describe, in words, what your patent, if granted, would cover and what it would not cover. (An infringement analysis is not a comparison of an accused device to a drawing from a patent.) The base filing fee for a patent application in the U.S. includes the option to file twenty claims at no additional charge, and I usually file all twenty. An invention can have multiple aspects, and even one aspect can usually be described well in multiple claims. The patent attorney must think very carefully about the wording of the claims, because even one poorly-chosen word can make the difference between a court holding infringement or non-infringement.
Depending on the invention, a claim may describe it implemented as an apparatus/device/product, a method, or a composition of materials. Claims may use terminology to express an element as a means or a step for fulfilling a function. I do not work with pharmaceutical or chemical inventions, so I usually draft claims for apparatuses and methods, and often I use “mean-plus-function” terminology for some – but not all – claims. The scope of the claims I draft include the broadest I believe are allowable (based on the prior art of which I am aware) and more narrow claims. The object is to describe the invention in many ways, because it is not possible to know which claims would be the most effective after the patent is granted.
Drafting a proper claim is not straightforward, and it takes years of practice and following the changing law to determine what should work best. An effective claim may look quite different from how you would describe your invention in a sales brochure, so do not be alarmed if you do not immediately understand a claim as soon as your patent attorney presents it to you. The claims should become clearer to you as your attorney discusses their meaning and scope with you.
After sufficient discussion between you and your patent attorney, the claims will be set as the basis for preparing the specification. As the specification is being written, the claims may change somewhat, but a "close-to-final" version should be ready before starting to write the specification.
(I acknowledge that some patent attorneys write the specification before drafting the claims. Because the specification needs to be written to support the claims, I believe it is better to draft the claims first to know what the specification will need as its contents to provide the proper support.)
The Specification
[To be written next]