Quality Patents: Patents That Stand the Test of Time
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Is your patent a vanity piece of paper for your office wall? Or is it a reliable, defendable, assertable, property right? The difference is often quality. Is your patent simply a transactional cost and a large pile of legal bills for your startup? Or is it a leverageable asset worthy of attracting precious investment dollars, worth its cost in multiples of valuation? The difference is often quality. Is your patent application only good enough to get through the examination process? Or has it been crafted to stand the tests of time and varied audiences if you later need to assert that document against an infringer, find yourself litigating with it in an Article 3 Court at the hands of a judge and jury, God forbid, end up having to defend its validity at the PTAB, or even needing to use it to block pirated imports at the International Trade Commission? The difference is often quality. Quality will be our focus for a good chunk of the remainder of this season. What goes into a quality patent, and where possible, how do you get it without breaking the bank? ** Episode Overview ** In this first episode of our quality series, Kristen Hansen and the panel discuss: ⦿ What do we mean when we say patent quality? ⦿ Why is patent quality important? ⦿ How to balance quality and budget ⦿ The importance of searching, continuations, and draftsperson domain expertise ⦿ Very practical tips, tricks, examples, and Kristen’s Musts for drafting quality applications https://www.aurorapatents.com/patently-strategic-podcast.html
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Quality Patents: Patents That Stand the Test of Time
- 1. Patently Strategic Musings Patent Quality 101 KRISTEN J. HANSEN | April 2024 This presentation is for information purposes only and does not constitute legal advice.
- 2. Patent Quality 101 Overview •What do we mean when we say patent quality? •Why is Patent Quality Important? •Tips, Tricks, Examples and Kristen’s Musts
- 3. The Patent Office vs. The Inventor/Company Patent Office Quality • Standard of examiner review used a reasonable inventive step threshold • Meets statutory requirements for novelty and clarity • Correctly issued in compliance with all Title 35 requirements and case law at issuance Inventor/Company Quality • Invention(s) are captured and articulated in a clear and comprehensive manner • Upholds if challenged in a lawsuit or other proceeding • Drafted to hold market value [i.e., direct product revenue, commercial value, add complementary revenue streams]
- 4. Why is Patent Quality Important? • A patent application drafted with quality in mind will provide a stronger place for an inventor/company and an Examiner to begin from • It’s a house of cards once you begin dropping quality • It becomes more difficult to uphold the patent, license the patent, withstand litigation, withstand post grant proceedings, and sell/license IP assets • However… there is a difference between quality and value • Clearly articulated claims and examples provided in a patent application will always provide more leverage and options in prosecution, especially in foreign jurisdictions • When biased toward value (i.e., reduced costs), some quality (i.e., aspects of a well drafted patent application) will be sacrificed • When biased toward high quality, costs of drafting can skyrocket to ensure points of novelty are well described, but costs of prosecution should be lower with fewer rounds back and forth because a more focused point of novelty was identified before drafting and more example back up positions are available in the specification
- 5. Inventors & Companies: Which way should you lean: Quality or Value? • What is the anticipated value of invention? • Low or Medium – use a value or a combined approach • High – Use quality approach • Is this invention a key/foundational piece of your IP portfolio? • Use quality approach • Do you have budget to perform prior art search(es)? • Just do it!
- 6. Tips, Tricks, Examples, and Kristen’s Must Do’s!
- 7. Kristen’s Must Do’s: • Follow MPEP guidelines for drafting figures and specifications, but also: • Describe every claim in the specification in full – literally and by example • Use Proofreading Software at each drafting step, but especially in claims • Do not use patent profanity and at least know some case law around this subject to avoid the big issues • (e.g., invention, only, must, need, critical, necessary, very important, special, superior, comprises, etc.); this applies to prosecution language as well • Keep background sections short/do not include inventive details, needs • Understand field of prior art closest to your invention before drafting • Use a jury figure and regularly add method and/or CRM claims • Draft several alternative embodiments of the invention • Disclose the best mode, but…
- 8. Narrow vs Broad Claim Drafting Tips • Aim to be broad enough to avoid competition and narrow enough to not infringe prior art • Specification should follow language of the claims and expound on the claims with many examples • Err on the side of broad claims, many examples in the specification • Describe several alternative embodiments well enough to later claim • Achieve balance between specificity and giving your patent a broad applicability • Generate broad-ish preambles (e.g., instead of “Classifying Depression” say “Classifying Mental States” or “Mental Status Assessment,” etc. • Strike a balance between specificity and giving your patent broad applicability • Strike a balance b/t obviousness and enablement
- 9. Quality Tips for US drafting and later non-US filings • Draft your applications to be PCT/EP friendly • Use technical problem, technical solution, technical benefit language in strategic places • Add details on the algorithm, extra flow chart/description • Describe how software might work with the hardware • Claim device in a manner independent of human interaction to shield the method from EP examiner scrutiny • Describe claims alone (separately) and in combination to avoid EP combining features issues
- 10. Tricks for quicker, but still quality drafting • Choose a top-down or bottom-up approach to drafting • Then describe each element that is important to the invention and how the elements interact, receive data, improve processes and/or improve conventional methods/systems Top Down Draft claims, work through drawings and descriptions together Bottom Up • Select drawings and draft description, then draft claims I use a combination of both – it works for me https://ipwatchdog.com/2024/02/27/top-bottom-approaches-writing-patent- application/id=173748/#:~:text=Accordingly%2C%20in%20a%20nutshell%2C%20the,works%20up%20to%20the%20claims.
- 11. Words are very important! 1A: …producing batter-coated dough… heating the resulting batter-coated dough to a temperature in the range of about 400o F. to 850o degrees F… 1B: …producing batter-coated dough… heating, the resulting batter-coated dough, to at a temperature in the range of about 400o F. to 850o degrees F… Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004)
- 12. Key Takeaways • Identify the points of novelty before drafting begins • Perform prior art searches religiously • Draft with technical solutions for technical problems in mind • Practitioners: Consider having your own regimented process for drafting to ensure that you make fewer mistakes and cover all aspects of the invention • Inventors: Consider the importance of your invention wrt to your company and pay for descriptions for additional embodiments, when warranted
- 13. What Questions Do You Have For Me?