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The Pitfalls of Drafting Your Own Patent Application

By: Christopher Heer, Rebecca Silverhart, Dominic Cerilli | Last updated: April 28, 2021

Businesses invest substantial time, money and resources into developing innovative products and appropriately securing intellectual property protection is part and parcel of this journey.

The patent application process has many steps, each of which requires careful thought and guidance to increase the likelihood of successfully obtaining a granted patent. While inventors can file their own applications, a patent application is ultimately a legal document, which requires the relevant legal expertise. Accordingly, there are numerous pitfalls to drafting one’s own patent application without professional guidance.

Are you Fluent in Patent?

Akin to the sciences and engineering, patent law has its own unique verbiage best known by patent lawyers and patent agents who have committed their careers to understanding the nuances of patent protection and enforcement. At face value, the patentability requirements of novelty, non-obviousness, utility, and being patentable subject matter do not seem daunting because, in common vernacular, these concepts are relatively straightforward.

However, under both the Patent Act and common law, set by decades of court decisions resulting from patent litigation, these terms take on unique legal meanings that depart from their common use. For example, the standard of non-obviousness requires the applicant to think about the “obviousness” of what is claimed as the invention in their application from a specific perspective: that of the “person having ordinary skill in the art”.

Who the “person having ordinary skill in the art” is and the extent of their knowledge about the technical subject matter associated with the proposed invention is determined in accordance with case law (that is, court decisions and reasoning) and prior art (that is, what is publicly disclosed among the technical domain most relevant to the proposed invention). The standard of non-obviousness also permits the “person having ordinary skill in the art” to combine multiple references from the prior art under certain conditions. Consequently, patentability is assessed not just by directly comparing a proposed invention against a single reference from among the prior art, but also by comparing the proposed invention against combinations of references found among the prior art.

Furthermore, the analysis conducted by the “person having ordinary skill in the art” takes on a particular legal structure by asking certain questions, such as whether there is motivation in the prior art to find the solution the current patent application tries to address. However, this inquiry also prohibits certain forms of experimentation that are considered too ingenious. The result is a highly particular and analytical exercise informed by the Patent Act, Patent Rules, patent examination manuals, practice notices and case law, all of which are extensive in detail, long-standing in history, and heavy on legalese. Nonetheless, such an exercise is familiar to lawyers who dedicate their careers to navigating legal obstacles for their clients by identifying, analyzing, and applying the most recent and relevant developments in patent law and practice.

How do You Define Your Monopoly?

Another key consideration is the construction of a reasonable scope of patent protection and a patent agent or patent lawyer has the specialized skills to assist in preparing a patent application that appropriately reflects the scope of exclusive privilege being sought. A granted patent provides time-limited, exclusive legal rights.

Operationally, a granted patent can be used to section off a portion of a market to the patent owner, from which other businesses cannot enter without the consent of the patent owner. The scope of this exclusive domain is defined by the claims in a patent application.

Drafting claims that are broad is advantageous to a patent applicant since, if granted, the applicant would have a broader exclusive territory. Broader exclusivity provides a greater potential claim to the market and, as a result, a greater opportunity to commercialize. For example, a patent owner may enter into licensing agreements that permit other parties to enjoy part of the patentee’s monopoly in exchange for money or other valuable consideration. The broader the granted monopoly, the more exclusive territory that may be licensed out.

Thus, a patent with broader claims carries more commercial value. On the other hand, claims that are constructed too broadly are more likely to be rejected by a patent office because the claims are more likely to encompass subject matter that may not be patentable, where a proposed invention is an improvement on a pre-existing product.

Taken together, constructing the scope of claims in a patent application has a substantial impact on the value of a patent and requires careful guidance and expertise to secure the broadest rights possible without having to field a multitude of patent office rejections.

During the patent application examination process, if a patent examiner initially rejects a patent application, the defects will be identified and you will have an opportunity to amend your claims and file a response describing how the amendments address the deficiencies. Relatedly, it is also possible to argue against the patent examiner’s objections without amending your claims.

This is essentially an opportunity to fine tune the scope of your claims, where the goal of making amendments is to strike a reasonable balance between the breadth of exclusive protection sought in view of the prior art references that were cited against the claims of the application. The expertise of a patent lawyer or patent agent can help applicants ensure that claim amendments do not reduce the scope of the claims to be narrower than necessary. Without such expertise, amendments may risk reducing the ultimate value of the granted patent beyond what is required to overcome an objection.

Accordingly, drafting claims well requires skill in the art based on accumulated experience, and it is beneficial to use the expertise of a patent professional to help determine whether it is strategically valuable to draft broadly, and likely receive objections to the claims, or to draft narrow claims, for a greater probability that the claims may be allowed.

The Time Value of Money

While it may be tempting to draft your own patent application, the perceived cost savings are outweighed by the opportunity costs associated with delays, such as the need to repeatedly amend an improperly drafted or filed application. Many improperly drafted or filed applications cannot be fixed and a failed application may cost far more than what would have been invested to retain a competent patent professional to draft and file an application on your behalf. More significantly, an improperly drafted or filed patent application may result in a complete loss of otherwise obtainable patent rights.

In this regard, it is helpful to understand that the claims of a patent application must be supported by the descriptive text or images that also comprise a patent application. This means a patent application should be comprehensively drafted to ensure that there is both a clear explanation of what the proposed invention is and that there are persuasive arguments that connect such a description to the exclusive territory being claimed. In absence of such tactful drafting, a patent examiner may object to the claims of a patent application and allege a lack of support among the description. A patent applicant then must review the descriptive portion of the application for language or imagery that supports the claims, which may prove to be an insurmountable exercise where an application was drafted narrowly or did not adequately explain key technical concepts. Patent lawyers are an invaluable resource in ensuring such mistakes are avoided and that a patent application is evaluated based on its technical merits in view of the prior art, rather than being objected to for presenting those technical merits insufficiently or improperly.

Furthermore, the legal complexity of drafting and managing a patent application can be exceptionally time consuming for those who are unfamiliar with patent procedure. This means that time and resources will end up being inefficiently and ineffectively invested in the patenting process, instead of those resources being directed to revenue generating activities, such as commercialization of one’s intellectual property. Delegating patent drafting, filing, and management to a patent professional allows your business to focus on its routine operations and leaves the bulk patent work to an appropriately specialized legal professional.

Further, prosecuting a patent can be a lengthy process. Accordingly, strategic planning from an intellectual property specialist can help align these timelines with your business objectives, save your business money, and ensure your patent application is drafted to encompass the most market-relevant aspects of your proposed invention.

It is important to understand that securing patent protection is an investment that can help protect a business’s most valuable assets and increase the amount of revenue and profit the business generates. Consequently, established companies may want to invest in expediting the examination of an application to deter competitors and to begin generating revenue as quickly as possible. On the other hand, start-ups can benefit from a lengthened prosecution period, thereby spreading patenting costs over a longer period in order to optimize cash flow and reduce reliance on loans.

Thinking of Filing? We Can Help.

Building a valuable intellectual property portfolio requires careful planning, attentive drafting, and professional expertise. As such, it is important to retain a patent agent or patent lawyer that works with you to understand your business objectives and helps you protect your intellectual property in view of your commercialization strategy.

At Heer Law, we understand that our clients are experts in their field. Similarly, we are patent experts that are trained to identify and protect the value-generating aspects of your proposed invention. To further your business objectives, we work cooperatively with you to understand, identify, and seek the most commercially valuable scope of protection for your proposed invention and draft a patent application that appropriately reflects your business plan and operations.

If you would like our help with preparing and filing a patent application, contact us now for a complimentary and confidential initial telephone appointment with a member of our team.