In the beginning, the inventor alone has the blueprint for the invention in his or her head.  That blueprint needs to get inside the patent attorney’s head.  If the process is done right, the patent attorney will understand the specific invention as well, if not better, than the inventor.  The reason for this is that patent attorneys must anticipate design arounds.  They need to be able to foresee what their inventor’s competitors will do once they face an issued patent.  Will the competitor be able to make a simple adjustment to his or her operations in order to not be bothered by the patent? This is not what the original inventor and patent attorney want.  If an inventor has invented something truly special, in other words has created a large intellectual space, he or she will want to occupy that entire space.  He or she will not want competitors to enter it.  If a patent can be evaluated, and then avoided by a simple tweak to a product in order to get around the patent’s claims, the original inventor will have been shortchanged.  If, on the other hand, the patent attorney thoroughly thought through future outcomes when he or she was drafting the application, and the resulting patent is such that the inventor’s competitors cannot practice the inventor’s technology in any respect without infringing, then the patent attorney will have done a good job.  In that situation, the inventor’s competitors will not be able to make simple adjustments to competing/infringing products, but rather will be forced to disrupt their operations, or face the consequences that will result in litigation.  

In order to get to this point, that is, to where the patent attorney can foresee vast numbers of design arounds, he or she must truly understand the invention.  The patent attorney must know what the state of the existing art is (e.g., what is currently being done), what exactly it is about the invention that makes it special, what details of the invention solve problems in the relevant technology field, what are the invention’s main advantages, what are all the different embodiments of the invention (e.g., what are different ways in which the invention can be made), what are limitations of the invention (e.g., can the invention only function with a component in one crucial orientation).  These questions, to name a few, should all be asked by a patent attorney, and not glossed over by an inventor.  

Although a patent attorney can begin drafting a patent application before speaking to an inventor, it is good practice not to substantively draft too much beforehand.  Conversations between an inventor and patent attorney reveal significant information about the invention, information that is not always apparent from an initial write-up by an inventor, called an invention disclosure.  Additionally, if the patent attorney invests time in writing up the patent application before speaking to the inventor, and then a subsequent conversation with the inventor changes the patent attorney’s understanding of the invention, inefficiencies result.  This is why initial conversations between inventors and patent attorneys are very important to have.  Once the patent attorney has answers to all of his or her questions, he or she can begin to draft the patent application.  When doing so, the patent attorney must keep in mind all of the conversations had with the inventor, notes from the inventor, drawings provided by the inventor, and relevant prior art, to name a few.  

After the application has been drafted, he or she should forward a copy of the application to the inventor for final review and approval.  It is then the inventor’s job to make sure his or her invention is accurately described and illustrated in the application.  If the process goes right, there will also be conversations about claim scope, where the patent attorney explains to the inventor what embodiments of the invention are covered by the claims, and what are not.  If the inventor notices that, for example, a critical embodiment (variant) of the invention is not covered by the claims that the patent attorney has drafted, then he or she must let the patent attorney know so that the claims can be revised.  Communication between the two parties goes a long way to ensuring that the heart of the invention, and the space surrounding it, is properly protected.

Finally, once the patent application has been filed with the USPTO, the inventor should still be kept in the loop.  Although it is possible that a patent examiner will issue a Notice of Allowance in a first response to the applicant, it is far more common that he or she will reject either all of the claims in the application, or reject some, but allow at least one of them.  While claim scope can be confusing to understand, the inventor’s opinion at this point in the process is still important.  If the inventor communicates that the limited coverage allowed by a patent examiner still sufficiently protects the invention, then foregoing the broader claims, which have been rejected, is not a bad option.  Doing this would also save significant time and money during examination of the patent application, as unnecessary further correspondence between applicant/examiner can be avoided.  That is, no further disagreements between the applicant/examiner need to be discussed, because the inventor has told the attorney that he or she is satisfied with the portion of the claims that has been allowed.  In this situation, a simple tweak to the claim language by the patent attorney should result in the issuing of a Notice of Allowance by the patent examiner, and a patent that the inventor is satisfied with. 

If, however, the inventor communicates to the patent attorney that he or she wants this patent issue on the coverage granted by the patent examiner, but still desires further coverage, there are ways in which the inventor can get further protection.  For more on this, please see my post entitled Once a patent application has been allowed by an examiner, what do I do to ensure that the resulting protection is optimal?

This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.

©John P. Powers, 2020, all rights reserved.