Always Draft the Claims First

Earlier this week, there was a comment thread on Patently-O which debated an interesting patent prosecution question—Do you start a new patent application by drafting the claims first? I am amazed that this is even a question. Let me jump ahead to the correct answer: Always.

The contrarians argue that for complicated technology, it works better to prepare the detailed description first, during which process they come to understand the invention. And then, after they understand the invention, they are able to write the claims.
I agree that you have to understand the invention before you draft the claims. So that is the true first step. But you still have to draft the claims before you prepare any other part of the application.

The claims really are the patent, at least the meaningful enforceable part of the patent. The only purpose of the other parts of a patent—the detailed description, the figures, the background etc.—is to give life to the claims by telling others in the field how to implement the invention. And until the claims are written, there is just no way to know what is needed in the other parts of the application. Once the claims are written, then they need appropriate supporting figures, background, and description.

So one problem with writing the description before the claims is that you don’t know yet what needs to be in the description, or what can be left out. And a good patent application leaves out a lot of interesting material related to the invention, material that is not needed to support the claims and which the client can protect as a trade secret. A poorly prepared description written before the claims can bleed trade secrets everywhere, for no reason.

But some would say that they can go back and revise the description after they have written the claims to remove unnecessary material. First of all, that is easier said than done—removing existing discussion is difficult to do so that everything you don’t need is gone and everything you do need remains. Moreover, everything that gets revised out was never needed in the first place and was a waste of time. Either the client pays for that unneeded time, or the partner writes it off the bill, but either way it was time stolen away from the central problem and task of writing a patent application, writing the best possible claims.

Always draft the claims first.

Am I a Good Patent Lawyer?

I am a patent lawyer, but how do you know if I am a good patent lawyer? I think the answer to that basic question has an easy part and a hard part.

The easy part is that being a good lawyer means being a good service provider. And it is easy to recognize the difference between good service and bad. Being a good lawyer starts with being aware of the client’s business challenges and goals, and having frequent thoughtful discussions with the client about where patents fit in that setting. It also means being responsive to client communications and providing clear timely answers to client questions. I think of all this as the equivalent of what you would expect when dining at a three star restaurant.

The hard part of recognizing a good patent lawyer is judging their professional ability. Because patent law is so complicated and so difficult, it is hard to assess the substantive performance of a patent lawyer. This is another form of the expert service problem that we all face in other areas such as evaluating the services provided by doctors, dentists, auto mechanics, etc. The client simply lacks the technical background to be able judge the full substantive merits of the professional services of a patent lawyer.

But surrendering on that point leaves only the famous Dirty Harry question: Do you feel lucky? And there are some things to look for, at least two of which come to mind immediately. First, multiple grammatical and spelling errors are not consistent with careful quality work. In and of themselves, such errors may often have no significant impact, but such things are indicative of the larger picture—the equivalent of dirty tableware and stained tablecloths in that fancy restaurant. Second, even though the language of patent claims reflects complicated and unusual constraints, still, by law patent claims have to be clear and definite. Claims that are impenetrable are not right, and are not the mark of a skilled attorney.

So to return to my original question, how do you know if I am a good patent attorney? First, I have to deliver exceptional legal service in my communications and responsiveness. Second, my work product has to be consistent with high quality valuable patents, using clear and definite claim language without glaring grammar and spelling errors. Is that so much to require?

Patent Infringers Need Sunscreen

These are sunny days for patent infringers. In fact, the weather has never been better. Over the past few years, the U.S. patent system has been walloped by a virtual legal hurricane, but now in the aftermath of the storm, times are sunny and warm for some.

Since the infamous BlackBerry case, the courts and the Patent Office have been busy making change after change to the patent system. Each change on its own arguably makes some sense, but cumulatively, they have all been in the same direction—against patent owners—and the patent landscape has been transformed into something wholly new, a mini-me version of what it once was.

Whether you think of it as a rogues gallery or an honor roll, the list of transformative court cases is undeniably long: KSR-lowered threshold for obviousness challenges, MedImmune-enabling licensees to challenge the patents they license, Ebay-higher threshold for permanent injunctions, Seagate-easier to avoid willful infringement, Bilski-limiting patentability of business methods, Comiskey-mental steps not patentable, Nuitjen­-data signals not patentable. Sunny weather indeed for nearly everyone, except perhaps for inventors and patent owners, who we have now been trained to refer to as “patent trolls” (to be consistent, I also now think of big corporations as “patent billy goats gruff”).

And the forecast for future promises more warm sunshine for patent infringers. Congress continues to look for a role to play in these transformations, and at the moment looks poised to pass “reform” legislation to “fix” the many “problems” in the present patent system.

Say, are you using those sunglasses?

Beneath The Surface

Intelligence, good looks, charm—let’s face it, patent lawyers individually and collectively are the complete package. We pretty much have it all. But a top patent lawyer needs more than that. To excel as a patent lawyer requires super-powers. Well, at least x-ray vision is helpful, the power to see under the surface.

One of the core activities in getting a patent is preparing a response to an Office action from the Patent Office after the claims have initially been rejected as unpatentable. There are two basic types of such rejections: (1) the substantive inventiveness of the claims over the prior art, and (2) the form of the claim language in satisfying the patent statutes. Among the various requirements in the latter category is that the claims are clear and definite enough to understand what they cover.

Claim rejections based on indefiniteness are often not a major problem for an experienced patent attorney. Typically, either a brief argument or a minor amendment satisfies the Examiner. And with experience, many of the pitfalls of indefiniteness can be avoided by good claim drafting techniques when an application is first prepared.

So, on the surface, it looks like either the form of the claims is proper in the first place so that indefiniteness issues do not arise, or if they do, a bit of minor attention cures the problem. It can seem like the main effort in prosecuting a patent application is to convince the Examiner that the claims are allowable over the prior art.

But a little x-ray vision can reveal a different situation under the surface. The claim language might not have problems sever enough to create an indefiniteness rejection. But there still might be places in the claims that are potentially unclear or ambiguous, a problem that I think of as micro-indefiniteness. This might not give rise to a rejection of the claims based on indefiniteness, but instead can create a rejection of the claims based on the prior art.

For example, one common situation is a rejection of the claims based on prior art that might have somewhat similar elements to what the claims require, but which are arranged in a different order. The obvious strategy is to argue back to the Examiner that the difference in the order of the elements is important. But this is also a situation to use x-ray vision to look underneath the surface of what seems to be going on. The Examiner’s seeming failure to take into account the required order of the claim elements might reflect some micro-indefiniteness in the claims that fails to connect the various elements together in the way that was intended. A deep and full consideration of the claim language and structure may suggest where such a problem might lie, and often a relatively minor change to the claim language may correct the problem.

It is worth noting that some patent attorneys strongly oppose any amendment to the claims that is not forced upon them, and therefore they roundly reject the above strategy. But not addressing the micro-indefiniteness of the claims can force responses to set forth longer, more complicated arguments and explanations which the Examiner may have trouble following or which may be unconvincing. This then creates a further rejection of the claims in another Office action. I believe that it makes more sense to make a small helpful change to the claim language, present a brief clear explanation of how the claims differ from the prior art, and obtain an allowance of the claims without further Office action.

So a little x-ray vision at the right time can be just what is needed in a patent attorney. Other super-powers may be available as needed.