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The Pitfalls of Drafting Your Own Patent Application

By: Christopher Heer, Rebecca Silverhart, Dominic Cerilli | Last updated: February 10, 2020
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; ultimately, a patent application is 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 a very particular legal meaning that departs 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 (i.e., court decisions) and prior art (that is, the status quo of the technical domain most relevant to the proposed invention).

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.

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.

In other words, 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 scope. Broader exclusivity provides a greater potential claim to the market and, as a result, a greater opportunity to commercialize, such as by entering into licensing agreements that permit other parties to enjoy part of the patentee’s monopoly in exchange for money or other valuable consideration.

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, especially in view of that most inventions are improvements on what we already know.

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 numerous 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 amendments are to strike a reasonable balance between the breadth of exclusive protection sought in light 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 are not narrower than necessary, which in turn may reduce the ultimate value of the granted patent.

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 greater certainty 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 continuously amend an improperly drafted or filed application. More significantly, many improperly drafted or filed applications cannot be fixed and a failed application may cost far more, such as a complete loss of patent rights, than what would have been spent to retain a competent patent professional to draft and file an application on your behalf.

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.

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 invention.

It is important to understand that securing patent protection is an investment that can help protect a business’s most valuable assets and, eventually, to leverage that protection to generate revenue. 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, startups 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 what will be the most commercially valuable scope of invention to seek and then draft a patent application that appropriately reflects your business plan and objectives.

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.