Patent Law

No Comprende el Postulado

By Gary Odom and Jordan Kuhn

Squalls of claim construction confusion howl in the halls of patent courts. The problem originates with incompetent prosecutors fond of squirrely claim language, and inventors failing to appreciate that precise language is essential to breathing life into their inventions.

While prosecutors typically perform the write-up, both in the specification and claim drafting, inventors are not without their share of burden. An inventor must view his claims as more than just legalese to be glanced over, presuming his hired hand has performed his job well. An inventor must grasp the critical importance of claim language, and employ his technical expertise to assure that his invention is claimed completely and distinctly. Failing their presentation from a prosecutor, an inventor must insist on comprehensible claims.

Besides creativity, discipline and a fluency in English are key ingredients for an inventor to benefit from the U.S. patent system. Invention is the genesis, not the omega. Great innovation + shoddy claim language that does not adequately bound the invention = a worthless patent.

Claims must be exact, staking terms with either definitional support from intrinsic evidence, or plain meaning in context of the claims. Patent claims drafting is the highest level of storytelling. Claims must be broad enough to anticipate future infringement, while succinct enough to insure clarity and distinct representation of the invention. A single word badly chosen or out of place can result in the death of a claim, or even a patent during litigation. One bad term in undifferentiated claims can be a unstoppable bleeding wound.

An inventor's job is made significantly easier by carefully selecting a patent agent. There is no substitute for choosing a disciplined prosecutor with a knack for careful storytelling and a thorough understanding of how claim construction plays throughout the patent life cycle.

Mr. Platinum is a former patent examiner, and works extensively in both prosecution and litigation. Having such holistic experience with all aspects of patents enables Mr. Platinum to craft Platinum Patents, with enforceable claims.

Full post as published by The Patent Prospector on May 20, 2008 (boomark / email).