Myths

ROBERT E. MALM, Ph.D

ATTORNEY AT LAW

CLAIMCRAFTED™ PATENT APPLICATIONS

Myths

It makes no difference as to which patent attorney secures your patent. A patent is a patent is a patent . . . .

It is commonly believed that the protection provided by a patent is pretty much independent of the particular patent attorney who prepared the patent application. A patent is kind of like a newspaper story. Provide the same facts to a number of newspaper reporters and the stories produced by the reporters will be substantially the same. Although the facts may be presented in different ways, the gists of the different stories remain the same.

Similarly, provide the same disclosure of the invention to a number of patent attorneys and the patent applications produced by the patent attorneys will be substantially the same. The specification and drawings for a patent application will simply be regurgitations of the inventor's disclosure. The claims will be legal specifications of the inventor's embodiment of his invention

There is an element of truth in this misconception. Most patent attorneys, particularly those that are subject to inhibiting time and cost constraints, will simply repackage the inventor's disclosure. The claims will be obtained simply by translating the inventor's drawings into words.

The typical patent attorney will not invest the time required to develop a thorough understanding of the invention. In the case of subject matter of some complexity, developing a real understanding of the principles of operation of the invention is beyond the capabilities of typical patent attorneys. Thus, if the patent applicant is more concerned with the number of patents in his portfolio rather than the quality of the patents, it does not make much difference as to who he selects as his patent attorney. If he will be satisfied with "cookie cutter" claims, then he can simply select the patent attorney who quotes the lowest price. And he can be satisfied with "cookie cutter" claims if his is a run-of-the-mill invention.

On the other hand, if the invention is potentially of great value, the patent applicant may want claims of the highest quality to protect his invention to the highest degree possible. Under these circumstances the patent applicant should look for a patent attorney who is capable of creating quality claims, particularly where the subject matter of the invention is technically challenging.