ROBERT E. MALM, Ph.D

ATTORNEY AT LAW

CLAIMCRAFTED™ PATENT APPLICATIONS

The players in the patenting process are first and foremost the inventor and the Federal Government who are bound together by the words in the U.S. Constitution that enable Congress to secure to the inventor exclusive rights to his invention for a limited time. Typically, an inventor will hire an attorney and the Federal Government will appoint an examiner, an employee of the U.S. Patent & Trademark Office, to represent them in the execution of the patenting process. The inventor may, if he chooses, interface directly with the examiner but is unlikely to obtain a quality patent by so doing. An inventor will obtain a quality patent only if he files a quality application containing quality claims, and the typical inventor is incapable of preparing such an application and prosecuting it through the patent office.

Thus, the main protagonists in the patenting process are typically a patent attorney and an examiner. The rationale behind the government's awarding of patents to inventors suggests that the attorney and the examiner should be working both individually and cooperatively in providing the inventor with the protection for his invention to which he is entitled. To understand why this seldom happens, we must explore the motivations of the attorney and the examiner.

But first, we must explain how the patenting process works. The patent attorney begins the process by filing a patent application containing (1) a description of how to make and use the invention and (2) claims that constitute the legal definition of the invention. The examiner usually responds with "prior-art" documents that seem to show that the invention, as claimed, had already been patented or practiced previously by someone else. The patent attorney, after examining the prior art, may conclude that the prior art does not disclose the claimed invention, in which case he provides arguments to that effect to the examiner. Or the patent attorney may amend the claims so as to avoid claiming the prior-art inventions as the inventor's. This interchange between the attorney and the examiner may be repeated several times and most frequently culminates in the issuance of a patent to the inventor.

An invention typically can take on many different forms called "embodiments." Quality claims are those written to include all possible embodiments of the invention not disclosed by the prior art. And it is the patent attorney's responsibility to see that they do so. Any embodiments excluded by the claims are the equivalent of free licenses to the public to practice the unclaimed embodiments of the invention.

If the patent process is to work as intended, the attorney must write quality claims and the examiner must be receptive to sound arguments regarding claim patentability. Most attorneys do not write quality claims and some examiners seem to feel their mission is to prevent the issuance of patents.

Attorneys do not write non-quality claims by choice. They simply lack the ability or are compelled by their circumstances not to expend the time and effort required to write quality claims. Attorneys are usually not equipped by training or experience to envision the conceptual basis of an invention. A bachelor's degree in engineering by itself does not provide a patent attorney with the conceptual capabilities required to write quality claims.

© 2002 Robert Malm