High Quality Patents
Heidi Brun, Patent Attorney.
There is much discussion in the patent world about “high quality” patents. In general, the notion is that such patents claim only that which is truly patentable (i.e. there is no prior art which can be used to invalidate them).
To this definition, we add the requirement that the claims be written broadly and to the business issues of the applicant.
How do we do this? By writing a good disclosure.
We repeat. To have high quality claims, the disclosure must be well-written. The drawings must be organized to start at the broadest view of the invention and only slowly become more detailed. The text must describe each drawing slowly, first orienting the reader to the general concepts shown in the drawing and only afterwards describing them in detail.
The detail is necessary for full disclosure. The broad orientation of the reader is necessary for high quality claiming.
The broad orientation describes a drawing so that a reader can understand generally what is happening in the drawing and how the main elements of the drawing cooperate with each other. Since such orientation is part and parcel of the text, claims (independent and dependent) can be made to it. These claims are broad, since they recite only what an element is trying to achieve. Further dependent claims can be made to the specific implementations shown in the drawings, if desired.
In our applications, these broad orientations exist for most drawings in the application. The discussion of the main drawing discusses the invention in its most general terms, including what it is trying to achieve and why it is wonderful, and is used for the independent claim(s).
Then, for each element of the main drawing, there are more detailed drawings. The discussion of each of these detailed drawings begins with an introduction, introducing the reader to the major parts of the drawing. This discussion is used for the dependent claims.
Finally, there is a detailed discussion of the elements of the drawing. This discussion can be used for further dependent claims or not, depending on how inventive the details are.
The end-product is a broadly claimed application, resulting from our insistence on good writing.
There are other advantages to a well-written application.
With it, any reasonably intelligent layman can understand the basic concepts of the invention, if not the detailed implementation.
Why does this matter? After all, as has been argued to us many times, the disclosure requirement is only that a person skilled in the art be able to make and use the invention. And who is a “person skilled in the art”? Someone technical. Thus, the argument goes, the text need only be sufficiently clear to a technical person.
It matters because the patent application, and later the issued patent, are reviewed by many people – at first, the inventor, then the Examiner, and, if there is infringement, the judge and the jury. Along the way, various other people read and analyze the text – investors being the most important of these.
If an application is written with the Examiner in mind, it will be fairly technical, as Examiners tend to be fairly skilled technical types. However, a very technical text is hard for lay people, even quite intelligent ones, to understand. It’s not that the invention is conceptually difficult, it’s that the patent writer did not write clearly and thus, anyone not willing to invest a serious amount of time in thinking about the invention will not make any sense of it.
“… will not make any sense of it”. That’s the point. The text should be so clear that it makes sense. That the reader nods his head as he is reading.
More than that, if the reader (i.e. the Examiner, judge or investor) has happily followed the disclosure, then s/he will just as easily agree to the broad independent and the broad dependent claims. With general descriptions, these very broad claims will be fairly based in the disclosure yet remain broad enough as to claim the concepts of the invention and not its detailed embodiments.
And, as long as the broad claims do not step on any prior art, they generally are allowed quickly. Because the Examiner has understood, truly understood, the invention.