Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
Quality Patents
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
** Mossoff Minute **
In this month's Mossoff Minute, in honor of celebrating America’s independence, we’re flashing back to our conversation with Professor Adam Mossoff about why patents exist, how the US system differed from all predecessors, and how the Founders’ notions of the core principles of democracy are inextricably linked with the societal good that comes from innovation and intellectual property protection.
** Discussed Links **
⦿ Patent Anatomy: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Claim Construction: https://www.aurorapatents.com/blog/claim-construction
⦿ Patent Wars: https://www.aurorapatents.com/blog/patent-wars-innovators-revolutionaries-and-the-race-to-reform
⦿ American Inventor Horror Story: https://www.aurorapatents.com/blog/new-podcast-american-inventor-horror-story
** Follow Aurora Patents **
⦿ Home: https://www.aurorapatents.com/
⦿ Twitter: https://twitter.com/AuroraPatents
⦿ LinkedIn: https://www.linkedin.com/company/aurora-cg/
⦿ Facebook: https://www.facebook.com/aurorapatents/
⦿ Instagram: https://www.instagram.com/aurorapatents/
⦿ TikTok: https://www.tiktok.com/@aurorapatents
⦿ YouTube: https://www.youtube.com/@aurorapatents/
Thanks for listening!
---
Note: The contents of this podcast do not constitute legal advice.
[00:00:00] Josh: G'day and welcome to the Patently Strategic podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion amongst experts in the field of patenting. It is for inventors, founders, and IP professionals alike, established or aspiring. And in today's episode, we're talking about patent quality.
Could there be a more important topic in this space? I struggle to imagine one. I've been reflecting on this in terms of how our episode lineup came together over the past few seasons. And when you think about it, the sharp edges we alert you to, the finer points we dissect, the semantic nuances we unpack, the common mistakes we highlight, the investment focused angles, even some of the travesties of the patent wars, and certainly the epic importance of claims, all boil down to a single, common denominator, and that's quality.
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. [00:01:00] Is your patent simply a transactional cost in 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 stay on 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 III 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. As an inventor, you cannot leave this to chance or to blind trust in the wrong professional. You've put too much into your innovation to come up short when its life depends on the measure of your patent. In the eyes of the patent office, judges, juries, PTAB admins, ITC officials, and patent savvy investors, it doesn't really matter how great, novel, or universe denting your invention is if it's not [00:02:00] properly defined and protected by your patent.
The difference is often quality. But to be clear, there are no silver bullets. Even a perfect patent won't save you necessarily from risks of hindsight bias. The present judicial mental illness around eligibility will get you an injunction when you need to stop an infringer. All topics we have and will continue to discuss and aggressively fight to make better.
But a well searched, quality drafted patent application with an open family will dramatically increase your odds of not falling prey to the assertion and invalidation dangers of prior art. Poor claim construction or an insufficiently enabled invention. And if done correctly, could provide you with robust downstream flexibility should case law or legislation change in unfavorable ways at some point in the multi decade life of your patent.
And you don't even have to take our word for it. Judge Paul Michel, former Chief Justice of the Federal Circuit Court of Appeals, the highest court in the land for handling patent cases, A man who judged several thousand appeals and authored more than 800 opinions once told me on a prior [00:03:00] episode that if all the applications had the quality of the highest 20%, we wouldn't have many of the problems we're seeing today in the patent world.
So this will be our focus for a good chunk of the remainder of this season. What goes into a top 20 percent patent, and where possible, how do you get it without breaking the bank? In light of all the trapdoors tied to the constraints of the English language that could exist. Even in a more perfect system, but especially in light of the aspects of the patent system screaming for reform.
It's also important to acknowledge that as long as this is the world we live in, as inventors and practitioners, we cannot settle for anything less than quality when it comes to our patents. We have to focus on minimizing risk surface area. What's not in our control is what the courts and Congress are up to.
What is in our control is creating the highest quality patents we can under the circumstances. In practice, this means being very intentional about things like not publicly disclosing before you file, conducting thorough prior art searches, crafting claims with clear boundaries, performing design around exercises to draft around infringement [00:04:00] vectors, writing enabling disclosures with limited functional language, understanding case law and aligning as closely as possible with both congressional statutes as well as court precedent, And remembering to keep patent families open with continuations, because sometimes the best offense is a great defense.
We will be exploring all of these practices and strategies in depth over the course of a multi part series on patent quality. But today, Kristen Hanson, patent strategy specialist and quality guru at Aurora, kicks off our series with a discussion focused especially on quality patent drafting. Along the way, Kristen 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, and a large collection of very practical tips, tricks, examples, and Kristen's musts for drafting quality applications. This includes a wonderful discussion around patent profanity.
Which is like Kristen's patent version of George Carlin's seven words you can't say on TV. Kristen is joined today [00:05:00] by our always exceptional group including Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora, Dr. David Jackrell, President of Jackrell Consulting, Marie Smith, Patent Agent at Brake Hughes Bellarmine LLP, and Ty Davis, Patent Strategy Associate at Aurora.
Now if any of the concepts discussed in this episode are new to you, or you're newer to the patent world in general, I highly recommend you listen to our Patent Anatomy episode to better understand the parts of an application, our Claims series to better understand the importance of claim construction, and our Patent Wars and Inventor Horror Stories episodes for a better understanding of what happens when things go wrong.
I'll be linking to all of these in the show notes. Now before jumping in with the panel, we'd like to take you to the next installment of the Mossoff Minute, a monthly segment that builds on our Patent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references.
In this month's Minute, in honor of celebrating America's independence, we'd We're flashing back [00:06:00] to our conversation with Adam about why patents exist, how the U. S. system differed from all prior predecessors, and how the Founders notions of the core principles of democracy are inextricably linked with the societal good that comes from innovation and intellectual property protection.
Here's a clip from that episode where Adam is talking about the genesis of the U. S. patent system in the Constitution and the Federalist Papers.
[00:06:21] Adam Mossoff: In Federalist number 43, which is, which is about the powers delegated to Congress more generally in Article 1, Section 8. So that's, Article 1, Section 8 is the section of the Constitution where Congress has authorized all of its powers that it has.
It has no other powers outside of that section. So that's where Congress can create an army and a navy. It can create a post office. It can declare war. It can print money. You know, and by the way, this is where patents and copyrights are put, right? This is on par with. The creation of an army and a Navy to protect our rights as a country, right?
This is where Congress has given the authority to borrow money, right? Uh, this is where Congress has given the authority to create courts, to resolve our [00:07:00] disputes, right? So, so this tells you how significant patents and copyrights are viewed by the founders. Federalist 43 is part of a couple of essays where he's just kind of giving short little summaries and descriptions of these various powers.
And one of them is article one, section eight, clause eight, which is the patent and copyright clause. And the very first sentence of this is the utility of this power will scarcely be questioned, which shows you Madison's failure of imagination.
[00:07:27] Josh: But I mean, but also how deeply baked into them that this was self evident and didn't, didn't warrant a whole lot of conversation. Yeah.
[00:07:34] Adam Mossoff: Yeah. Well, because then in that, yeah, he says, well, his next sentence, he says, you know, the right of, of authors at common law has, has Already been recognized in England.
Um, and by the way, what he means there is that the copyright is a property, right? And then he says the very next sentence, he says the rights of inventors are justified in this, uh, on the same grounds, even though they're statutory in England, not at common law. And then the very next sentence, he says in both [00:08:00] cases, both cases being passed and copyrights, the claims of the individual and the public good fully coincide, um, which, which is this, you know, really important.
Recognition of the founders that protection of the core rights of life, liberty and property is not just in the interest of the individuals. This is the basis of how you have a flourishing society. And, you know, that they viewed them as intimately linked and going hand in hand. And this is, in fact, I think captured beautifully by the Declaration of Independence that Josh referenced earlier, where Jefferson says the right to life, liberty, and the pursuit of happiness.
And they really meant that. I know they saw property is necessarily part of that logical progression, um, so he was kind of jumping over property, not because he was downplaying it in any sense, he was just getting to the ultimate goal. Because for, for them, they didn't think of property, individual rights, as being some type of kind of abstract moral duty that had zero connection to one's life.
They viewed this as fundamentally part of [00:09:00] what it means to not just be, live a happy life as an individual. But that all of the happy lives as individuals add up to a flourishing society that is peaceful and growing and successful. And that's what protection of rights leads to and secures for us. And they clearly view patents as part of this, why they put in a constitution.
They saw this as connecting deeply with the success of individuals and the success of our country.
[00:09:26] Josh: And literally the only place the word right appears in the Constitution.
[00:09:32] Adam Mossoff: Yes, yes, which is significant. It's hugely significant. Yeah, it's tremendously significant, right? Because, you know, the pre Bill of Rights, so, you know, the Constitution is written in 1787 before the Bill of Rights is adopted in 1790.
Um, the, you know, it's the only place where the word right is ever, you'll ever find. Yeah.
[00:09:51] Josh: Thanks, Adam. We're also publishing clips from the Mossoff Minute as short form videos on Instagram Reels, YouTube Shorts, and TikTok. You can check out these shorts and [00:10:00] follow us at Aurora Patents on all three platforms.
And now, without further ado, take it away, Kristen.
[00:10:06] Kristen: All right, well, let's get to Patent Quality 101. So what we're going to cover is what do we mean when we say patent quality, and why is patent quality important. And then we'll cover some tips, tricks, examples, and Kristen's musts. And I'll put a caveat on that.
Most of the musts are things that you need to do anyway, based on MPEP or patent law. Other things will have some nuances and I'll tell you why we do those patent laws and, and. Lists of items that really come out of the MPP, but overall, you know, good patent drafting can make a market difference in how or if your patent will be enforced or enforceable.
Uh, the most important part of any patent application is those claims and those claims need to be supported and enabled by words of the specification and those 2 elements. Drafting claims and [00:11:00] supporting and enabling claims are really what drive patent quality for most inventors, most companies, and sometimes examiners and certainly litigators who are looking to attack your claims and your quality or your lack of enablement, right?
But I will put this disclaimer out there for companies and inventors. Claim drafting really does involve technical skill and expertise. And it rather than doing this yourself, do get some help. Um, you should aim to hire some sort of qualified patent agent or patent attorney who really has expertise drafting in your field, like in your technical field of your invention.
It's not a necessity, but it is going to create a higher quality patent because they will not be bogged down in learning your technology. They'll be able to just focus on creating content. And examples around your invention and technology. [00:12:00] Part of that quality is provided by their experience in your technology too.
So, you know, if you have to do it without or with, with a practitioner who does not have explicit experience in your technology, I would just say, make sure as an inventor that you provide a lot of detail and examples. And you proofread really well what's given to you and you add where you can when that draft is given to you.
Because we as practitioners, if we are not well versed in your field, we are still attempting to ethically help you as best we can. And we may get it wrong in certain areas. We won't know that it is wrong because we don't have the technical piece of your technical field. Um, it's rare, but, you know, occasionally we're drafting outside of our comfort zone.
Uh, most of us venture into things we've done before, but, you know, there was always a 1st time we did that too. So. It's just something to be aware of. [00:13:00] Okay, so when you look at what is patent quality. If you're looking at what is patent quality from the patent office side. Versus the inventor company side, you're going to see a couple of different things and they're looking for different things.
The patent office quality side. They're looking at standard of examiner review and how they use a reasonable inventive step threshold. They're looking at examination, how they were training their examiners, how their training worked for their examiners, and if there was a quality review of a patent application.
They do look at drafting content and drafting standards because. They have to pick out errors in your patent application as they examine. So there's a quality piece there that relates to our drafting, but it's more looking at, is this a quality issued patent application based on examiner review? And does it meet the statutory requirements for novelty and clarity?
And also, is it correctly 35 [00:14:00] requirements, which is rules and law for patents? And then. Is it kind of issued in compliance with case law at issuance? Now, it's great that they look at case law as the PTO. And they do take it into got into consideration in their examiner guidance, but they're always well behind case law and case law changes pretty rapidly over time.
So they do try, but they don't always get it. If you're looking at inventor or company based quality of patent applications. These, this group of people is really looking for inventions that capture and articulate a clear and comprehensive set of pieces of your invention, right? The features are clear and comprehensive and everything's articulated well.
This is important to them because that kind of a patent that is articulated clearly and well done will uphold if challenged in a lawsuit or another proceeding. And this is the group that's going to get hit with a challenge or other proceeding, [00:15:00] right? And then they are also looking whether what you drafted is good enough to hold market value so they can get things like direct product revenue, hold commercial value, or add complementary revenue streams.
So this is a little bit different quality wise. And I would say that practitioners and anybody drafting applications lean on this inventor company quality side because These are the things we want to ethically do for our clients, but we also need to do these things so that our patents withstand challenged, challenged lawsuits or proceedings, right?
There's no way that we can ignore quality if that center upholding challenge in a lawsuit or other proceeding. Is ignored. Um, you just can't do it. If you maybe if you're lucky, you will end up with a quality patent for somebody who did not know what they were doing when drafting or was not aware of how to draft to avoid [00:16:00] litigation or just attacks in general, right?
Post grant proceedings are attacks on your patent. Okay, so why is patent quality important? Patent quality really can have a few meanings, right, depending on who's assessing, but a patent application drafted with quality in mind will provide a stronger place for an inventor or a company and for an examiner to begin from.
You know, if this is the Rolls Royce patent, that is your cutting edge invention, you want quality from the beginning. And if you provide that quality, your examination from your examiner is going to be a little smoother as well, because you have a well organized specification, clear claims that went through this quality sort of process.
And you have a lot of examples as backup positions. So this helps the examiner help you move to allowance and this helps the examiner just examine. And one thing to note, it really is a house of cards once you begin dropping quality. [00:17:00] It becomes more difficult to uphold the patent, to license the patent.
To withstand litigation or post grant proceedings and sometimes to sell or license IP asset, right? This is something that if you drop the quality of your patent, let's say in half, half of those things in that list could come after you after your patent is issued. And they're the mistakes in your patent, which, which are lack of quality, usually based, cause these things to be bigger problems than they should be for, you know, inventors companies.
Usually not the patent office. This is usually by that time they're out of it. So, but there is a difference between quality and value. And when I say quality, I mean, uh, clear claims, lots of strong, uh, embodiments and alternative embodiments, following general guidelines that do not hurt you in litigation and in post grant proceedings.
And when I say value, I mean, [00:18:00] Not using as many examples or figures. Uh, maybe sometimes you don't know about these other roles. However, usually I would say value isn't that your practitioner doesn't know. It's that your budget is such that they have to take some pieces of what they would normally do for ideation for that quality aspect, and they do not do that, or they lessen that.
And that can actually bring the quality down if you're not You're in prosecution and you get to the point where you do not have a backup position, right? That that can be a real problem. Clearly articulated claims and examples. We'll always provide more leverage and options in prosecution, especially in foreign jurisdictions.
So one of the things I like to do if I am imposed with doing a value based patent application draft is to say, okay, here's what I've done. Are there any other things you can think of for this example? Are there any other things that you would add to this [00:19:00] block diagram? And please describe them. So I try to put these pieces back on the inventors because sometimes that can save you.
I'm money. I'm trying to think. Sometimes it also gets you a backup position that you did not expect to have. Uh, because the inventor didn't indicate it in the interview or in the materials, or you, he didn't think of it until, you know, he read your application. One thing to know though, when bias for kind of value or reduced cost applications and, and drafting, some of that quality will be sacrificed.
And on the other hand, cost of drafting can skyrocket. When it's biased towards high quality because you're trying to ensure the points of novelty are well described, but that should be offset in most cases by prosecution costs being lower because you have fewer back and forth with the examiner because you have Focused on the point of novelty.
You've created all of these, [00:20:00] um, actual backup positions, but also alternative embodiments that can be described and disclosed and claimed differently than what you've originally claimed. So it should help you, but that's not always the case and not everybody can afford a really high level. pet application for every single application that they file.
[00:20:20] David: Kristen, yeah, and I think that's a really good point and, and, and, and also, yeah, just to add to that, you know, there's always real world constraints, right? You know, everyone always has a budget. We would always love to be able to, uh, add more examples or more details or whatever. Um, but like to your point, um, Spending a little bit more time and money upfront can actually be add value to the company, right?
Make the investment patents are expensive under any, any yardstick. Right. And so to spend a little bit more time, for instance, I'll give one, doing a really good search, you know, before you start drafting. [00:21:00] So sure, you're spending more money, but that can save you so much money and time and effort. Like you're saying, you know.
Back and forth and in prosecution with an examiner in a worst case, maybe you never even get an issued patent because you are unaware of all kinds of things. Um, and the same arguments go for what the, what you were describing in terms of not having enabled claims or them not holding up in, in litigation, right?
Um, This upfront investment can make a lot of sense, uh, to your point.
[00:21:32] Kristen: Yeah, no, no, thank you. Uh, it's good to hear, and I will go into later, of course, uh, prior art searches and kind of how those should be vetted, or just, or done or not done. Uh, I think that's that's a rabbit hole in itself that we could go into for quality that comes out of those or not quality that comes out of the house,
[00:21:52] David: which
[00:21:54] Kristen: can happen.
But one of the ways I was thinking for inventors and companies to [00:22:00] figure out how you would lean to pick a quality high. High value asset or a lower value, lower quality asset and how you would request, which would be done. And I thought, okay, well, you would ask yourself, what is the anticipated value of the invention?
So if it's lower medium, because it's just a hobby or it's something that interests you, it's a product that you don't know if it'll sell, you just want to get into the industry and start. You maybe take a lower medium quality approach and you use a value or a combined approach. But if it's high, like it's the key foundational piece of your portfolio or your product, and it's going to be, you know, something that you lean on for several years, then you want to use that quality approach.
And then, to your point, look at, to see if you have budget for performing prior art searches. And I say, even if you don't, just do it, just perform the prior art search. You can learn some [00:23:00] shortcuts by either using a smaller template. and less costly firm to do your prior art searching, and then you can take it from there and do further prior art searching on that.
If you do not know how to search, you can probably spend and pay a practitioner 30, for 30 minutes of their time to give you some tips and tricks and talk you through how to do some of those searches. Um, so there's a lot of leverage there, and there's a lot of, um, Value out there and just understanding your prior art landscape.
So I said, I was doing,
[00:23:34] Ashley: I was going to say, you know, but what I would say is, and what I've appreciated more over the years is that searching is is very much an art. Um, form to it, and so maybe the inventor can find some good stuff, but I still think there is value in somebody who is gifted in the art of searching.
Spend a couple hours, which is like, really small peanuts when you consider the cost of the full application process, or even just the [00:24:00] drafting process. And so I would, you know, I would consider getting professional help in some way, shape or form, because it is truly an art form to, um, to find relevant stuff, um, beyond maybe just, you know, 1, that's kind of in the same space.
[00:24:15] Kristen: It is, but if this is something that's a hobby or something that is kind of an interest that you're not sure you would create a product on and it's your first foray into patents, I'm not sure if I would give them the whole kit and caboodle. I would maybe say let's figure out together in an hour of time between the two of us on a call what the scope of the prior art might be for this and just come up with a loosely guided.
Sample of what is out there, then at least you have half a clue. And then I only say that to people who are saying, I absolutely do not want to do a prior search or pay for one, right? I obviously I see huge value in having others who are skilled in this area [00:25:00] do a prior art search. They're faster at it.
They come up with better content and they just analyze better even than I would looking in the same field, right? And I've done this for a long time. I've done searches, so it's just it's what your inventor is willing or company right is willing to pay for. But that's why I put on there. Just do it. Have it performed because I think it's that important.
And honestly, if you find the scope of prior art, that can save you so much money later during litigation, because you knew about it, so you wouldn't patent down that same avenue that you knew about, right? You would not see a competitor patent and say, I'm going to claim almost exactly that. It's rare that you would do that, right?
You would do that maybe to get an interference going, but you would not do that as a standard. Inventor who says this is my invention. This is what I want to invent. But if you have the prior [00:26:00] arts scope, you know, you can avoid litigation later. If you inadvertently claim into somebody's space, you can avoid.
Prosecution costs if you inadvertently claim something too broadly and don't have backup positions, right? There's all kinds of things that a prior art search can help you avoid. No, nothing is foolproof. They can help you. It's all just tools. Okay, tips, tricks, examples, and Kristen's must do's. So this is the fun part.
And this is, I'll ask you all some questions too and get your opinions, because I know everybody has some opinions. Uh, I'm going to go through mine first, because I look at these as, these are must do's, even if you're doing a lower budgeted, not. I won't call it quality versus not quality. I will call it the budget is lower, but you still need to do these things because this is the ethical thing to do.
And this makes sure your inventor isn't in trouble later as best as you can do as a practitioner. [00:27:00] So, of course, everybody's going to do this, um, just because You know, this is how practitioners are trained, but an inventor might not know this. So there's an MPP guideline for drafting figures and specifications.
It's lengthy. It's long. It's boring. Read it anyway, because you will screw something up if you're doing this as an inventor yourself, if you're doing this as a practitioner, and you're getting a lot of errors submitted from the office saying, Hey, you need to fix this. You'll have invitations to correct left and right, um, I would say reread this section because maybe you're making some mistakes that can be avoided and nobody likes to redo work, right?
Um, so the first thing I would say, describe every claim in the specification in full, literally and by example. Now this is a patent law, this is really, um, common knowledge and this is what you should do anyway, but this is nuanced in that not everybody understands that this means you need literal, literal.
[00:28:00] Language support for your claims, and you need examples of your claims. So, in the very highest, very not deep, and not enough case, you've recited your literal claim language in your summary, as you've generated your summary, and you have an example in your figure. That is the bare minimum. But you should have that claim element in a figure and that claim element described by example, at least one example.
The way I do this as a practitioner is I actually take my claims once done off into another document. And I copy them into places where I'm going to use them in the specification and I color code them differently so that maybe they're red text so that I know that's claim that needs to be either literal or I need to understand that that the things I'm changing aren't important, right?
You can change up the you can change some things that aren't super important. Important because you will have the literal [00:29:00] coverage usually in your summary section. And just a quick aside on that. Some people only do their independent claims in their summary section. And that does for you is it saves you some page count.
And as long as you make sure your dependent claims are literally described in your specification descriptions and examples, and you use that literal language, you're probably okay to do that. Some people do that. And then they put a. Example section in somewhere in the middle of the patent that lists all the claims, and they just use them.
They call them examples. The only problem in foreign space is sometimes European space will make you remove that content. And now you no longer have literal support. If that's what you were relying on. And sometimes it's just okay. As long as you understand. You have to have literal support and you have to [00:30:00] have the example and you bring yourself to task to do that with all of your claims.
If you want to shortcut a summary, for example, or you don't want to use claim clauses that have all of your example claims. It's, it's okay to not do those things, but then you have to have the, the, uh, Guidance for yourself and the, I don't even know how to say it, like you have to make yourself do specific rigid details for how you describe these, these claim, this claim language.
And the examples. Um, the way I do that is I do the copy paste, but I also write figures based on what my claims look like usually. So I know that if I have a sensor in my claim, I have a sensor somewhere in my figures. The next step, uh, always use. Proofreading software at each drafting step, but especially in the claims.
This will save you so much time and effort and mistakes. You will not create as [00:31:00] many mistakes in an application. Or it actually creates unclear examples when your claims don't have proper antecedent basis or your claims are mistakenly dependent on other claims. clarity problems, but in other spaces it causes huge problems that you didn't get those dependencies right.
Whether it's antecedent or dependencies, it causes huge problems where you may not end up with the patent you expected. So use proofreading software if you can. I've used patent bots, I've used Planemaster, I've used a handful of AI tools, and there's more of those coming out by the day. Um, Any tool you can use to just check your work is, is really great.
Uh, spell check. Spell check is huge. And I know in this day and age that's ridiculous for me to have to say that, but a lot of people don't spell check their stuff. And some of us forget once in a while and go, Oh, I just did that. And you didn't. You did [00:32:00] it on the prior draft, right? So everyone can make mistakes like that.
Well,
[00:32:05] Ashley: and, you know, to add to that, I've noticed too, for depending on, I'm assuming it's spell check settings, it will catch misspelled words, but it won't catch a lot of the, I mean, and the stuff is, you know. Minor and all considering all things, but it won't catch, um, more spaces than you need or come is in the wrong spot.
Or so you actually have to like, in word, at least you have to go through and click the little ABC checkmark button. For it to catch all these other things that classical quote, unquote spell check doesn't catch either to help finish cleaning up the document.
[00:32:42] Kristen: Yes, absolutely. And to add to that pain, uh, there are actually situations where PC word processors use completely different, uh, situational assessments than Mac based word processor spellchecks.
It's [00:33:00] horrendous. Google Sheets uses a different sort of setup or rules than the other two as well. So you will get a lesser or better spellcheck or. Grammar check in one and not the other. So it's kind of painful. Um, okay. So another tip. Do not use patent profanity and at least know some case law around the subject to avoid the big issues.
And when I say patent profanity, I mean, things like invention only must need critical necessary, very important, superior, even comprises because comprises should not be in your actual claim specification. Because it really belongs in the claims or the summary. Those are claim terms. However, um, as long as you're clear on what you mean by it comprises, you can define that in your specification in an as used herein.
And you can use it, but I was taught. Just keep it out. It's easier to say is or may be than comprises and be more [00:34:00]clear and more open than the term comprises because comprises has a very clear claim meaning in case law and otherwise. So using it in your specification can kind of step on some toes and put some hackles up on people's backs that did not, that you didn't intend to do.
And then they start reading into the term comprises instead of reading. That it's just an is, it's just an includes, it's just, right, it's just an English term to say this includes, it's I just avoid it. Uh, are there any pet peeves for patent profanity out there? I just want to ask because I'm always curious.
Anybody on the, on the call?
[00:34:38] David: How do you feel about the word, I think we might have talked about this in a previous podcast. How do you feel about the word embodiment?
[00:34:45] Kristen: So I'm okay with embodiment, but I have a really interesting way of thinking about embodiment. I think you can use embodiments or implementations.
I don't mind which I don't like to use them in terms. intertwined [00:35:00] because I think it's just a little bit unclear. Um, but when I say embodiment, I don't say an embodiment unless I'm talking about a figure. I'll say, you know, figure one is an example embodiment of. I'm fine with it there, but I will not use an embodiment or one embodiment in the specification.
I will only use in some embodiments and the reason I use some and not one or N is because if you use that term in a few different places, if you say in one here and in one there. There, it's not necessarily implied that in one embodiment on the left side pertains to the in one embodiment on the right side.
And it's not clear that you can combine those. If you say in some, you can combine everything in your specification with probably within a figure if you are talking about like European space, because they have different [00:36:00] requirements for how you set out examples, but It's just more clear to just say it's, I'm sorry, it makes it a little bit less clear to say in some, but it's more easy to understand that you could combine those things.
And later, if you need to combine those things, it gives you coverage to say these two things could be combined. So, I mean, one of the big problems with it is If you say in one, you are more likely to also say in a preferred or in one preferred embodiment. And you never want to say that, right? You do not requirement is to lay out best mode.
It's not to tell anybody and everybody what best mode it's right. You don't have to do that. So it only hurts you. Right? Because if later your best mode happens to be your second best mode, you don't want your application to have said in in the best mode or in the best, you know, preferred [00:37:00] embodiment.
[00:37:01] David: Right, I feel exactly the same way. I also do not like an embodiment or in one. It makes me think of that preferred best mode thing, even if it's maybe not saying it exactly. But, um, the other, I don't know if you're going to, Talk about this is the tense using past tense versus present tense and and um, that the office came out with some patent office came out with some guidance on this.
I think a couple of years ago that past tense should really only be used for something that you're You, you did, you, you, like an example, quote unquote, like in an example section should always be past tense. And that if you use past tense in it to describe something that you didn't actually do, it can be misleading.
And actually, um, I don't know if it would lead to an invalid patent, but it's, it's, it's not correct.
[00:37:56] Kristen: Interesting. So you would do it in like, [00:38:00] uh, data that was for. Proving what you did. Okay.
[00:38:03] David: Right. Like, um, you know, this, uh, cell culture was tested, you know, if you say, if you use language like that, when you didn't actually do it, that's misrepresenting, apparently.
[00:38:15] Kristen: Interesting. So I did not really know that. And I also, Would not, I was not going to talk about that. 'cause I didn't know that. But in, even in examples where I'm talking about data, I'm talking about experiments, I tend to even genericize those up. And I say the method could include, or the method includes the, and I, I take out the, what they did in the past tense version and I make it present tense or make it, uh, more conversational.
In a, includes this, includes this, includes that. Yeah.
[00:38:47] David: Yeah.
[00:38:48] Kristen: And I didn't realize I did that, um, which is fine,
[00:38:52] David: um, from the standpoint that you're not misrepresenting anything, um, certain technology areas. [00:39:00] So, uh, biotech and chemistry put a lot of weight in terms of enablement on things that were actually done and actually tested rather than something that you're being prophetic about.
So that's where the example section or, you know, you don't necessarily need a separate example section at the end, but clearly saying, you know, this experiment was performed or this, I even do, this modeling was performed and here are the, and the results are shown in figure whatever, using it in past tense to say, to, um, To represent it as something that was actually done, I think, can, can, can have benefits.
Yeah, in some, some cases.
[00:39:42] Kristen: Okay, no, thank you. That's a good ad. Um, so I mean, basically, patent profanity just unnecessarily limits your scope of the invention. So avoid it at all costs. There's always another way to say it. Uh, and remember, this applies to your prosecution language as well. Be careful when you're, you're arguing, [00:40:00] um, keep background section short and do not include inventive details or needs.
If, if you, your background section isn't even required, we do it out of just, it's conventional, but, um, If you don't keep it short and you put inventive details in there, you're, you're admitting that whatever you're saying in the app, in the background section is prior art. So you want to keep inventive details out of there at the very least, putting things like long felt need or this was done because you're putting the pieces of the invention in there.
Don't do that. That content can go in your summary. It can go in your detailed description. It just doesn't belong in your background section. Mine is usually one paragraph. It's pretty esoteric. Sometimes it talks about a body part that something might go into or, um, you know, a networking system that might use a client and a server.
It's pretty generic to the point where I've had people go, well, I don't really know what it's about. And I'm like, that's good. Let's go moving on. It can only hurt you. [00:41:00]
[00:41:00] Ashley: Yeah, I think a good rule of thumb is just, you know, if it's. Material if that background is material to the invention, it's better. And I think you share the same sentiment and probably have enforced that more with all of us.
Kristen is that, um, if something's material to how the invention works, that there's like a clear gap in. We have conventional technologies or prior existing technologies to just highlight that more as a technical problem in the detailed description and how your technology solves it to kind of turn a problem into a solution instead.
And don't put it in your background. Just put it in your in your, um, detailed description.
[00:41:39] Kristen: Okay, understand field of prior art closest to your invention before drafting. This helps you decide what the point of novelty of your invention might spin on. Use a jury figure and regularly add method and or CRM claims.
So a jury figure is something that a non technical person can understand and you do this in case your [00:42:00] examiner is lazy and just wants to look at a figure and figure out what the invention is. If your jury or judge is non technical and your Patent prosecutor or litigator really, really wants to make this clear.
They can easily fold this up to the jury and explain. Here's the system. And here's where the invention lies. And it's just very clear and it's not hard to do right. This is usually figure one for me, but it doesn't always have to be it. Give some context to your invention as well. So as for the method and CRM claims, so this is a deeper subject that we should talk about, but adding these types of claims really gets at getting different infringers on what they're doing with your claims subject matter.
And so regularly adding a method claim onto your system claim can help you. Uh, CRM claims are infringable in the same manner that system claims are. So for software, CRM [00:43:00] claims are pretty powerful because it's very expensive to attack all of your claims in litigation or post grant. And so if somebody wants to just attack something important, they'll attack your system and maybe your CRM claims will make it out.
Okay, if they're infringed the same way, they uphold different rights, uh, draft several alternative embodiments of the invention. So I do this to a degree, depending on the budget, and sometimes you have no choice and you have to keep doing this because you're given so many examples that you have, you can't leave them out, right?
Your inventor says, where's this other piece? So for those, You try to shortcut do them in in shorter paragraphs and shorter descriptions as you work down the specification. Um, it's not always great. You know, that does cut quality a little bit, but at the same time, you have to balance quality with budget and then disclose the best mode.
But as we talked before, it is not necessary to [00:44:00] actually say what the best mode is. You just don't have to do it. And I would say never do it. The only requirement is that you disclose it, not that you say what it is. Okay. So narrow versus broad claim drafting tips. So we always ask, you know, how broad or how narrow and does that provide a different quality to your patent?
And it depends because sometimes it does. Sometimes if you went too narrow, that's really not a useful patent in the end. The inventor cannot get licensing for it or they can't sell it. So the way to do this is to aim to be broad enough to avoid competition, but narrow enough to not infringe prior art.
Okay. That's a lot to take in, and it's a lot when you start creating words to an actual claim. So your specification should follow language of the claims and expound on the claims with many examples. If you want to write a broad claim, and you have a specification that has lots of examples, and lots of language, and lots of alternative [00:45:00] embodiments, you're okay to have a broader claim because you have backup positions to put in.
If you want a narrower claim, I would ask you to Only go as narrow as you think you need to, and then back out another clause, right? Cause this is something it's very hard to do as a new practitioner and it's. even difficult to do with very complex inventions as a seasoned practitioner. So it's almost like jewelry or makeup.
Put it all on, take the last piece off before you go, right? I don't know, I don't know if David or, you know, Ty understands that, but let's put it on if you're putting layers of clothes on. So err on the side of broad claims and many examples in the specification describe several alternative embodiments well enough to later claim and this this is how you achieve balance between specificity and giving your patent kind of a broad applicability so you can you can say things very [00:46:00]distinctly about what's in the figures and then you can say you know the applications of how your invention can be used and if you kind of walk through that process that usually will fall out into enough examples to be.
good enough back backup for later. Uh, generate broadish preambles. So like if your invention is about classifying mental, uh, states of a person or of a patient, maybe instead of saying classifying depression, you say classifying mental states or mental status assessment, right? This is just ways of kind of broadening out even your preamble to make it Fall into a different art unit or be more clear as to what you're doing or be more broad as to what you're doing.
And strike a balance between specificity and giving your patent broad applicability. Um, this is the same thing. You could do it with a preamble. You could do it with removing steps. You could also do it with just having lots and lots of backup [00:47:00] positions in your specification and examples and for later use in your claims should you need them.
And then strike a balance between obviousness and enablement. You know, make sure you have enough backup positions that you didn't just define, you know, a watch that has a face and a band and you didn't describe anything else and you don't have any other examples. So you want to. Make sure it's not obvious and also make sure it's enabled.
[00:47:26] David: You know, that's such a great question in terms of like, breadth versus narrowness. And I'll add one other thing in there, which is continuations. You know, um, I think in a lot of situations, it's hard to put a number on it, but in a lot of situations, I think you can almost plan, you know that you're highly likely to file a continuation in the future.
Even before you file the original patent, you know, and so it can be a good strategy to be a little conservative, right? Go a little more narrow on the first set [00:48:00] of claims. I think there's just so many advantages to filing a continuation, keeping the family alive and all of that, of course. But even just from the breadth versus narrowness perspective, you can Go narrower, get an issued claim for the client quickly without having to go through a lot of prosecution and cost and then, um, follow that up.
And you see, during that process, you see what, how the examiner is thinking about it, how they are interpreting the claim, what kind of prior art they're relying on. And based on that, you can say, aha. They didn't find very much. Let's go a lot broader now in our continuation or wow, they found a lot. Let's carve out what we can.
Um, yeah, I like, I like, um, continuations a lot for various reasons, but even like from that perspective of knowing what to claim originally, I think it can be really helpful.
[00:48:52] Kristen: Well, going narrow originally and using your con as kind of your prior art search can get a little expensive. [00:49:00] Um, however, if you had to go narrow because the art was so good, it's still okay to broaden in a different way and use that exact process, I think, to broaden in a different way.
Um, I don't know if I would go narrow to begin with on purpose until forced with prior art, but, you know, it depends. It depends on the invention.
[00:49:21] David: Absolutely. There's so many different factors. I mean, going back to value and, you know, the main point here, you have to have a claim that's valuable. You have to have a claim that is going to cover what the company inventor is doing and it's going to exclude others in a meaningful way.
All of that, right? Of course. Um, but yeah, I don't know. I think you're right. It can be costly, but, um, just responding to an office action can be the same price as Filing the filing fee for a con, right? So if you have claims that are relatively narrow, they go right to allowance and then you file the con, well, you've got an issued patent quickly and, and you're not really [00:50:00] spending more money.
Uh, you're spending less money per patent, you know, in a way, but it depends, absolutely, lots of different things can happen.
[00:50:08] Kristen: Yeah, no, I think, I think sometimes you won't know until you know, because you won't know until that first or second office action, right? Um, That's tough. That's tough to gauge before you know all that, but it is a strategy that I have used before.
So quality tips for U. S. drafting and later non U. S. filings. So just draft your applications to be PCT EP friendly. That means use the technical problem, technical solution, technical benefit language. And I have some examples in there that we, you know, We can go through at another time and another call, um, add details to any of your algorithms or an extra flow chart or description when you can.
If you see something that seems of value or if your inventor has a partial mini process that seems valuable, [00:51:00]describe how software might work with the hardware. This can help you in Europe to basically. Describe how something is useful and what the technical benefit is, uh, claim device in a manner independent of human interaction to shield from method.
to shield your method from EP examiner scrutiny, and this is particular to the non predictable arts and typically medical device. You want to keep your human out of that. You know, if you're saying descriptively that, you know, you're receiving or taking something from a user, or of a user, or a measurement, that's not the same as the use of human.
Interaction in a claim, right? That's just description saying this is what this is about. This measurement pertains to a patient describe claims alone separately and in combination to avoid interaction. EP combining features issues. This one is a doozy, and the biggest problem [00:52:00] is this. If you want to describe Claim 1 plus Claim 2 plus Claim 3, you're probably okay in the claims because you set it up that way.
If you have another element in Claim 8, and Claim 8 doesn't depend on 3, but you want to comply in 3 and 8, you may have some trouble because you didn't describe it that way. So, they like to see Combinations. of examples that include each component of it, a resulting end claim. So you could have some trouble there.
You also could have some trouble pulling things apart out of claims because you describe them together and you've intended unnecessarily that the technical benefit comes from the combination. Okay, tricks for quicker but still quality drafting. So you can choose a top down or bottom up approach. You know, this is typical problem solving, but then you describe each element that's important to the invention.
And I'll say if you [00:53:00] do top down, you draft claims and then you work through drawings and descriptions together. This can be really helpful because you have a, an outline, and this is the way I work most of the time, unless I have a very complex invention, and then I do a bottom up approach where I select drawings and draft description, then I draft claims.
The only caveat I will tell you if you use this bottom up approach. You need to have a situation where you understand that you have to take the claims that you have drafted and put them back into your specification appropriately. You cannot just assume, yeah, you've kind of covered them in figures and examples.
You need that explicit language and I would say literally copy paste them back in in certain areas and describe a full example around them. Uh, and here's a quick quick words are very important. Can anybody tell me? If they like this claim or what might be wrong with this little claim element here, we've got producing batter coated dough and heating the resulting [00:54:00] batter coated dough to a temperature in the range of about 400 to 850 degrees.
[00:54:06] Ashley: Well, I think it's unclear what batter coated dough is, um. Okay, because I don't bake a
[00:54:14] Kristen: lot. Are you thinking because they use the term resulting?
[00:54:21] Ashley: Yeah, yeah, I just, you know, I guess, you know, we don't have the whole thing here, but yeah, you know, it's unclear. I guess what batter coated dough and resulting and yeah.
[00:54:30] Kristen: Okay, that's not exactly it. But how about if you look at this claim producing batter coated dough, heating the resulting batter coated dough at a temperature in the range of about 400 to 850 degrees. This situation. Yeah,
[00:54:46] Ashley: it's, yeah, it's measure the dough versus the temperature of the oven, right?
[00:54:51] Kristen: Yeah, and if you cook dough to 400 to 850, you have a briquette.
So this is a case, this is Chef America [00:55:00] v. Lamb Weston, and they got in some big trouble because a judge and a jury are instructed to actually use ordinary meanings suggested. And so heating the resulting batter coated dough to a temperature in the range of this. is literally heating the dough. Heating it at a temperature in the range of this is quite different, right?
This means an oven. And it doesn't really matter that the inventor said we use um, an oven in the specification, right? They're saying the baking step takes place in a suitable oven. Because the literal meaning of heating to a temperature. Right? With the noun, batter coated dough, literally means to heat that dough to 400 to 850.
There's no other way they could take that. These guys got in big trouble and lost their, their rights that they thought they had. Right? They have now rights to heat dough to that range, but that's useless. All right. Key takeaways. Always identify [00:56:00] the points of novelty before drafting begins. Perform prior art searches religiously.
Raft with technical solutions for technical problems in mind. And practitioners, consider having your own regimented process for drafting to ensure that you make fewer mistakes and cover all aspects of the invention. And for inventors, consider the importance of your invention with respect to your company and pay for descriptions for additional embodiments when warranted.
[00:56:24] Ashley: No, that was that was great, Kristen.
[00:56:27] Marie: That was great. And, um, it's all so many lessons we learned the hard way. That's all I'm going to say.
[00:56:35] David: Yeah,
[00:56:36] Marie: but I still
[00:56:36] Kristen: after all these years, I've known Marie, I don't know, 20 years, maybe, maybe more. I want to know what's your biggest pet peeve in patent language.
[00:56:45] Marie: You know, not even from discussing PEP language, my biggest PEP peeve, and I went through this in a prior firm because they did a lot of templating, et cetera.
My biggest PEP peeve is you [00:57:00] repeat the exact claim language a million times throughout your specification in the exact same manner. So you pat yourself on the back for claim support. But you don't have it because if you don't explain what you're trying to say in that claim, independent, dependent claims, and you're sitting in front of an examiner, your host, I appealed the case at one point, and I actually had a liable subject matter that had to be let go because it was 112.
It was one. Sentence, Dependent Claim, where that sentence was repeated probably four times in the spec, but it never gave any explanation as to what it meant.
[00:57:47] Kristen: No written description and no enablement.
[00:57:49] Marie: So, you say you have support, and I've become super hyper about that. And yes, you should repeat the claim language [00:58:00] within the specification.
Um, a lot of that's important for Europe and whatever. And you can use your own language. Automated patent software to generate all of that, a claim summary. You could put it in as examples. We can, you know, go on and on about how you can repeat that language. But what you really need to do, you really need to make sure that you have enabled and explained what is in that dependent claim.
And everyone I look at, I say, okay, so when the examiner says, where is this in the invention? How does it work? What does this mean? I can point to it. And part of the language was a predetermined threshold level. That's all the claim said. I don't know where the threshold level came from. I don't even know what the heck it was for.
And the art didn't talk about threshold levels, but the examiner said, well, what is this threshold level? And I had to sit with the examiner and go, Oh, good question. I don't think I can answer that, so always a problem. Yeah, that's,
[00:58:59] Ashley: [00:59:00] that's something that resonated with me. I think this is a super important topic, and I guess something that I'm still learning and striking a balance to today is, you know, of course I'm always working on the procedural side, doing it correctly, but To not lose like that balance of like striking between the artist and the engineer where you're following that procedure, but you're still trying to share like the beauty of the idea.
And that's like, to me, the fun part, um, but not just focusing on that, but covering your, covering your bases as well.
[00:59:32] Marie: You know, for me, the other thing is going back to Kristen's jury figure or, uh, bottom line. It's the first time your case has been picked up in prosecution and you're talking to the examiner.
Do you have a figure? Do you have a paragraph that actually describes it on a use level? What is this thing doing? So you may have algorithms and all this other beautiful stuff, but what is it really trying [01:00:00] to accomplish? Sometimes the inventors are so in the weeds, and rightfully so, that they maybe don't present that to you, and that's sometimes what I ask the inventor.
So how old do I as a user, you know, use your invention or see your invention? Um, because that's what you communicate to an examiner, and more than once when I've given that explanation, In circumstances where it was never in the spec, the examiner will say to me, oh, oh, now I understand it. Can you tell me where that is in the spec?
And I then have to say, well, it's not really there.
[01:00:36] Kristen: Yeah, so what you will see when I, these are all great points, what you will see when I draft a specification is a few intro paragraphs that I don't love to start with boilerplate. I like to start with intro paragraphs and those paragraphs happen to be me.
Figuring out what the points of novelty of the invention are and describing them in kind of non legalese, [01:01:00] very English text. And when I can pin that down, I feel that I can go write claims.
[01:01:07] Marie: Yes, exactly. So I think some of these pet peeves have come from being in other firms where I've inherited other people's cases or gotten transferred in cases where this is not done.
And the pain of having to either go through, um, uh, prosecution and talk to an examiner, or, you know, I vividly remember having to let a level subject matter go because I could not provide that support. And that to me is an error on the practitioner's part, whoever drafted that. That was clearly just, just look at your claim terms in your spec.
That's where your automated tools comes in because patent bots will tell you how many times in your spec was that claim term used. If you see zero, you need to go back. If you see one, you need to go back. And I have sometimes because sometimes you'll draft the claims and think it's a better way of saying it, but you have the [01:02:00] support for what you're doing.
Maybe I just said it differently in the claim and I'll just make sure I wrap that into the specs so that everything ties up very neatly. I think, I think that's it, Kristen, for my karmic pet peeves. Yeah, thank you. No, it's great.
[01:02:18] Kristen: We'll call you next week and get your other pet peeves. No, thank you very much.
Thank you, everyone. I know we went a little bit over, but wonderful discussion. I think there's so much more to say and talk about in this arena for inventors, practitioners, even patent office. You know, personnel have quality pieces that they think are quality and end up. Painfully hurting their inventors and their practitioners.
Right. So I think it's just a huge, huge bowl of discussion that can happen. All right. On that note, I think that's right. I'll let everyone go. Yeah. Have a good week.
[01:02:55] Ashley: Thanks. Thanks, Kristen.
[01:02:59] David: [01:03:00] Bye.
[01:03:01] Josh: Bye. Alright, that's all for today, folks. Thanks for listening, and remember to check us out at aurorapatents. com for more great podcasts, blogs, and videos covering all things patent strategy.
And if you're an agent or attorney and would like to be part of the discussion, or an inventor with a topic you'd like to hear discussed, email us at podcast at aurorapatents. com. Do remember that this podcast does not constitute legal advice, and until next time, keep calm and patent on.
