Beware Spending Thousands on a Worthless Patent
(or Why a Second Patent Opinion May be Worth Every Penny)
A well-kept secret of the legal world is a fair number of patent applications are poorly written. Here is an explanation of why it happens and what you need to know to avoid spending thousands of dollars on an ineffective patent … or worse yet, on a patent application with short-comings which will prevent it from ever being granted.
High quality patent application writing requires specialized legal knowledge as well as a number of diverse skills. The knowledge and skills are sufficiently specialized that there is a special bar examination which must be passed in order to write and prosecute patent applications before the US Patent and Trademark Office on behalf of clients. Due to the somewhat esoteric nature of patent law, which includes its own legal jargon, clients often feel they have to go on faith that patent counsel is doing a good job – and often patent counsel does little to discourage this view.
Clients do themselves a great disservice if they have doubts about the quality of services, yet allow those doubts to be allayed based on empty assurances or offhand dismissals by patent counsel. If inventors are puzzled about aspects of their patent application, and those concerns are waved away without proper explanation, something is likely amiss. Inventors certainly cannot be expected to develop expertise in the whole of patent law. However, with relatively simple, straightforward explanations, inventors are quite capable of understanding the particular aspects of patent law necessary to evaluate their own patent application.
The good news is that there are many knowledgeable, conscientious patent agents and attorneys who provide quality services. The bad news is that there do exist patent agents and attorneys who -- often under cover of a smoke screen of legal jargon and bravado, and the fact that a successful outcome can never be guaranteed -- do not provide adequate services. Following are some of the common issues that arise and their warning signs …
Failure to properly understand the invention
One of the most common issues is that patent counsel doesn’t adequately understand the invention. If the technology is not adequately understood, the invention cannot be fully appreciated and therefore cannot be properly protected. When stated simply and directly, this seems obvious. Yet, I have seen numerous instances where the invention was not properly claimed, or even entirely missed, because patent counsel did not have sufficient technical capability.
At the outset of the preparation of a patent application, patent counsel won’t necessarily have the technical expertise to thoroughly understand the invention. But counsel must have enough technical savvy and must devote the time necessary to be able to understand the invention thoroughly. For sophisticated technologies, this will generally require background reading, follow-up telephone calls, and/or multiple meetings with the inventor.
One of the requirements for the patent bar is a bachelor’s degree in science or engineering to insure that patent drafters have a certain minimum level of technical skill. However, even with that requirement, technical capabilities differ widely among practitioners. If you feel there are indications that patent counsel does not adequately understand your invention, you should probably trust your judgment. If patent counsel says things like “I don’t need to understand the details” or asks questions that indicate a persistent lack of understanding, take that as a red flag. The Detailed Description section of a patent application is written in plain English, not legalese, and if it fails to accurately describe your invention, you should be able to ascertain that.
Lack of details
The word “detailed” is included in the title of the Detailed Description section of a patent application for good reason: a well-written patent does not skimp on details. Details described in the application often provide the building blocks of your arguments or claim amendments during the prosecution stage of the application. One generally cannot anticipate what prior art will be cited against your application by the patent examiner, so one can’t know which details will prove crucial in differentiating your invention from cited prior art.
Details regarding the invention cannot be added to a patent application once it is filed. The only way details can be added is through a subsequent “continuation-in-part” filing, and the subsequent filing will be assigned a later filing date. Since the U.S. now operates under a first-to-file system (see my newsletter entitled “The New U.S. ‘First to File’ Law” for more information on this), a later filing date opens up the possibilities of recent additional prior art being cited against your application, or another party beating you to the patent office with a filing before the filing date of your continuation-in-part application. Therefore, it is important to include detailed descriptions of all the aspects of the invention in your initial filing.
It is worth noting that clients are often reluctant to include details of the implementation of their invention in their patent application under the misconception that the details described might limit the scope of their patent. However, the scope of the invention is determined by the wording of the claims -- the details in the Detailed Description section play a supporting role to the claims and their inclusion can only be helpful. Furthermore, after long exposure to their invention, inventors are often dismissive of the inventiveness of details of the implementation. However, by delving into such details patent counsel may be able to identify valuable bottlenecks to implementation that can be patented.
Determination of which areas require details beyond that of the inventor’s original disclosure requires communication between the inventor and patent counsel. If patent counsel does not probe for additional details or generates your application based on a single conversation or a cursory disclosure, or if the Detailed Description section of your application is considerably shorter or has considerably fewer figures than those for similar inventions or mainly consists of lists of options rather than the specifics of your preferred embodiment(s), it is likely that your application lacks sufficient detail.
A patent is a legal document in which every word is important. Sloppy or careless writing generally means that the description is inaccurate, and an inaccurate description may prove fatal. There is one well-known instance where the use of the wrong two letter preposition (“heating at” a certain temperature rather than “heating to” the temperature) resulted in a patent that could not be enforced.
Although the claims are written in legalese, the rest of the text is written in plain -- albeit tediously detailed and selectively redundant – English. Writing which does not describe the invention thoroughly, clearly, and accurately may result in serious problems, particularly if you ever need to litigate and the patent is inspected carefully by opposing attorneys.
Unlike most other forms of writing, good patent writing is not particularly concise, in part because of the selective redundancies involved. However, if the text generated by patent counsel is inaccurate, vague, confusing, or disorganized, one should be concerned.
Lack of preemptive arguments
Arguments regarding unobviousness which patent counsel presents during the back-and-forth with the patent examiner are more powerful when supported by arguments already presented in the Background of the Invention section or elsewhere in the application (i.e., “preemptive arguments”). Although preemptive arguments are not required, and sometime not even necessary, they can be very useful for simple inventions or inventions in crowded fields of art where obtaining allowance is a challenge.
For simple inventions or inventions in crowded fields of art (such as, nowadays, phone apps), patent counsel should begin the process with a patentability search or a survey of the field and then develop strategies for countering obviousness rejections from the examiner. If patent counsel does not have proposals of how obviousness rejections might be overcome and/or does not include support for such strategies in the application, you should be concerned that patent counsel will not be able to shepherd your application to issuance.
Low-price, fixed quotes
The adage “You get what you pay for” certainly holds true in the patent world. There are many service providers (such as the majority of the so-called “invention development” companies) who work on a low, fixed-cost basis and are happy to take your money to provide you with a hastily-drafted, minimal patent application which will never be granted as a patent.
At a minimum, it takes about an hour per page of drawings and text (with one inch margins and 1.5 line spacing), and two hours per page of claims (at 2.0 line spacing) for patent counsel to draft an application. Add to that the number of hours of meetings required and you can get an idea of what a patent application may cost by multiplying the total number of hours by patent counsel’s hourly rate. Therefore, you may actually be able to generate an estimate of the minimum your patent application should cost if you can find a well-written patent for a similar invention. (Each column of text of a published patent or patent application roughly corresponds to a page of text.) What is tougher to quantify in advance is the number of hours required for background research and creative problem solving -- the importance of which will be addressed in an upcoming newsletter -- although both can be critical.
Inventions are, by definition, something new so it is often not possible to find a patent for an invention similar enough to your invention to provide a good estimate. The inherent newness of inventions makes providing quotes for the preparation of patent applications challenging for patent counsel as well. For very simple inventions patent counsel should have sufficient experience to be able to provide a quote with a reasonably narrow range, while quotes for more complex inventions can have a fairly large range, such as plus or minus 25 to 30%. Furthermore, the scope of more sophisticated inventions often only becomes apparent after patent counsel gains some familiarity with the details. Hence, for complex inventions providing a quote may require an initial meeting or research, and the quote may need to be updated as additional areas of importance are identified during the preparation of the application.
Lack of experience
Quality issues are not necessarily avoided by going to the high-end firms since the drafting of patent applications is often assigned to associate-level patent counsel with limited experience. Although the associate’s work is typically reviewed by a more senior supervising attorney, this is often only a cursory review to avoid costs becoming prohibitive. This is particularly problematic for highly technical inventions where the supervising attorney may review the text, or just the claims, but does not devote enough time to become versed in the technology.
Typically, the first 3-5 years of practice is considered the training period for patent application drafting. This is about the length of time it takes to gain the first-hand experience of guiding a number of applications through the entire examination process. Don’t let your patent application become training material for an inexperienced associate. Ask to have your case transferred to someone with more experience, or choose a different firm where someone with more experience is assigned to your case.
Inventors invest years of blood, sweat and tears creating their inventions, and it is heartbreaking to see them lose patent rights due to a poorly written patent application. It is more common than people might expect. Don’t let it happen to you! Be discerning and skeptical. Ask questions and expect clear answers. Don’t be intimidated by obfuscation or bluster. If you have concerns, by all means get a second opinion from a separate firm. Make sure your money is well spent and your invention is protected.
This newsletter is intended as general advice and should not be considered legal counsel. Best courses of action will always depend on the particulars of your invention and situation.