Who Is Infringing?

I’ve written before about how difficult it is to know how good a patent attorney is (“Am I A Good Patent Lawyer?”). I used to think we were examples of what economists call the Expert Service Problem. That is, we were like dentists and auto mechanics in that it is extremely difficult for the customer to know how skilled (or even how honest) their expert service provider really is.

Previously I’ve suggested that clean clear communications and work product might be the only evidence of a skilled patent attorney, and the converse, crummy cluttered error-riddled documents, the main hallmark of a hack. But I’ve been rethinking that, and realized that there are more visible signs of patent prosecution skill.

One of these is to look at the claims of the patent and ask yourself: Who would infringe this? Consider a medical devices company that gets a patent with a claim that in part requires “a screw embedded in bone.” That claim will not be directly infringed by a competitor selling a product with a screw. Rather it is only directly infringed after the surgeon embeds the screw in the bone. Not good. Surgeons are the customers for this device. Your customers are not happy to be sued for infringing your patents

This is also not a particularly difficult problem to avoid. In the example above, everything changes if the claim simply reads: “a screw adapted to be embedded in bone.” But plenty of patent lawyers struggle with this.

So one thing a skilled patent attorney does is write patent claims that are infringed by the client’s competitors rather than their customers.