The claims are the most important part of a patent!
Typically, a utility patent has 7 parts:
- A title that generally describes the invention.
- An abstract that summarizes the invention.
- A background that describes the problem you are solving and what others have done.
- Drawings of the invention if it can be illustrated.
- A description of the drawings.
- A detailed description of the invention referring to the drawings.
- One or more claims defining what you want to protect.
Of these parts, the claims, are the most important. They define the scope of protection. They’re like real estate where you have a fence, and if you’re inside the fence, you’re trespassing, but if you’re outside the fence, you’re not.
With claims, if your product is within the scope of the claims, your infringing; if not, you’re not infringing. Patent attorneys refer to this as the claims reading upon the product. For a claim to read on a product, every claimed element, or its equivalent, must be found in the accused infringing product. Although complicated, an equivalent element generally means, even though each element is not identically present, infringement can still be found if a substitute element substantially functions in the same way to get the same result of the claimed element.
For US inventors, obtaining a patent begins with drafting and then filing a patent application at the United States Patent and Trademark Office. Drafting strong patents requires a collaboration between the inventor(s) and a skilled patent attorney. The inventors are the experts in the technology. The invention is by definition unique, and the inventor(s) must explain it, how it’s an improvement, and what problems it solves. Your attorney must understand the technology and use his legal experience. The best patents are those that combine the inventor’s technical knowledge with the attorney’s legal knowledge.
Technical Knowledge + Legal Knowledge = Great Patent Protection
An experienced attorney is someone who has drafted numerous patent applications, rendered clearance opinions, and litigated patent infringement lawsuits. Even better is a patent attorney who has worked as an Examiner at the United States Patent and Trademark Office. They know the system from the inside out, and have been trained in the USPTO Patent Academy. Their daily work as an Examiner is making decisions on what can be patented.
Your invention is too important to be fodder for a beginner. Claim drafting is truly a form of art. A single word can make the difference between winning and losing. To experience this in an actual legal battle is invaluable experience. I learned this in my first patent infringement lawsuit. I had been a patent examiner, and left to join a law firm. I was helping with a patent infringement lawsuit in a Detroit Federal Courtroom. The entire case turned on the word “strike.” The patent attorney who wrote the patent (not from our law firm) could have used a broader word like “drive “or “force.” The patented device used a metal punch to penetrate a work surface. Our client’s device used a slide hammer, and the accused device used a cam, but both were for the purpose of causing the punch to penetrate the surface. We lost the case because of that one bad word choice. That’s knowledge that can’t be taught, it can only be learned through experience. Since that loss, I carefully examine every word and check dictionaries, and thesauruses to determine if there is a better word available.
In today’s world, finding a skilled and experienced patent attorney isn’t easy. Most attorneys only write applications or litigate, they don’t do both. They are in silos of expertise. Even harder to find is one that worked at the Patent Office, because only a small percentage have had that experience.
- Be careful in choosing your attorney. They’re not all created equal.
- Become actively involved in the entire patent process.
Work closely with your patent counsel and review the application thoroughly as well as all communication to and from the patent office. If you have questions, ask, and keep asking until you understand the answer. Your invention is too important.
Bill Honaker, “The IP Guy,” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.