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Drafting and prosecuting high quality patents

There are many aspects to what constitutes the “quality” of a patent in the United States. The term “quality” primarily refers to a patent’s strength when that patent is the subject of litigation in this country, and more specifically, the likelihood that said patent will be held to be valid and infringed by a competitor. But the term “quality” further encompasses other aspects. For example, that term also refers to the proper grammar, syntax, and even spelling within the body of a patent and in all the writings submitted by the applicant (directly or through counsel) during prosecution of the application that led to that patent. Those characteristics, along with clarity of language in the patent’s description of what is often a complex subject constitute quality. Writing the contents of a patent in a simple, concise, and simple manner should be aimed at the ability of lay persons to fully understand what is being described and legally claimed in the patent. And why is clarity and proper language important in a patent? Because in litigation it is highly likely that neither the judge nor the members of the jury will necessarily be technologically savvy or trained, and it is precisely those members of our judicial system that ultimately determine the fate of litigation involving a patent in this country. It is therefore of the utmost importance for a patent in this country to be written in such a way that its quality makes it likely to prevail in litigation against a competitor that infringes the invention as claimed in that patent.

Quality also needs to be part of the prosecution of the application that leads to a patent. Specifically, it is important to note that statements commonly made during prosecution to argue in favor of the patentability of the invention may come back to haunt the owner of the eventual patent, in a way that is detrimental to his interests. In that regard, a well-known expert in this field has coined the phrase “Miranda Rule” as something that exists in patent law, and akin to the “Miranda Warning” in the context of criminal law in this country. What that refers to is the notion that anything a patent practitioner or even the applicant states in the application and/or during prosecution “can and will be used” against the patentee (i.e., the owner of the patent) by the courts in this country in a manner that narrows the scope of protection otherwise provided by the patent. And such statements do not even necessarily have to be full affirmations but may merely take the form of single-word adjectives used in the description of the invention, or in writings – or even verbal statements – submitted to the United States Patent & Trademark Office during prosecution of the application.

Case law provides many examples in which the quality of a patent, or rather the lack thereof, has resulted in a patent that has been held to be narrow in scope, and resultingly not infringed by a competitor imitating/copying the invention embodied in the patent. Patent practitioners, especially those that stay current with case law developments, are well-aware of what constitutes “patent profanity,” which refers to terminology often seen in patents that likely render a particular feature of the invention described in the patent to be necessarily part of the invention, even if not legally claimed i.e., not recited in the claims. For example, referring to a particular characteristic of what is being described as important, essential, a must-have, special, necessary, peculiar, advantageous, key, or critical runs the risk of having such detrimental effect and thus constitutes “patent profanity.” Similarly, the use of terms of absoluteness, as opposed to terms of relativity or approximation, may be problematic. For example, using terms such as “only,” “always,” “never,” “absolutely,” and “every” may end up being problematic and therefore detrimental to the patentee’s interests in enforcing his patent. By way of illustration, an invention directed to a pencil that claims the hollow body of the pencil being made from wood would in theory cover a pencil made from any type of wood. But that may not be the case if in the body of the patent or even during prosecution the applicant made a statement to the effect that the pencil “must” be made from pine wood, or that the use of pine wood in the body of the pencil is “essential” or “very important” because of a particular advantage provided by that type of wood. A court in this country would likely narrow the scope of the claimed invention such that infringement would require the accused pencil to be made from pine wood rather than be made out of any wood, irrespective of what the claims of the patent set forth.

Notably, and counterintuitively, use of the word “invention” within the body of a patent or in statements made during prosecution, should be avoided, unless carefully characterized a way that denotes that what is being described is not a feature that necessarily forms part of the invention. For example, it is acceptable practice to refer to “embodiments of the invention” but the drafter should prudently convey the notion that the embodiment of the invention to which the description refers is merely illustrative, rather than constituting the only embodiment and therefore the invention in and of itself. Modern practitioners, accordingly, prefer to avoid use of the word “invention” altogether, and even avoid use of that term in the titles of the different sections of a patent. For example, many modern practitioners will use the word “Background” rather than the phrase “Background of the Invention” as the title of the section of a patent that often describes the state-of-the-art and the circumstances that led to what was invented. Likewise, modern practitioners often use the headline “Summary” rather than “Summary of the Invention,” “Technical Field” rather than “Field of the Invention,” and “Detailed Description,” “Detailed Description of Particular Embodiments,” or some other similar phrase as the title of the section of a patent that describes the technical aspects of the invention being disclosed. One illustrative example would be – referring to the pencil patent discussed above – if in the body of the patent a statement is made to the effect that the “eraser of the invention” has a particular functionality or has a particular shape, when the claims of that patent perhaps do not even recite the presence of an eraser. A court in this country would be justified to hold that, even if the eraser is not set forth in the claims, the above statement by the applicant makes it clear that the applicant/inventor intended for the invention to necessarily have an eraser, and that therefore a pencil that doesn’t have an eraser is not covered by the claims of the patent in question.

In sum, quality is a must-have in a U.S. patent, and there are many aspects of what constitutes “quality.” The above are only some examples of what those aspects encompass. In future blogs, I will explore those and other aspects in more depth. I often find it funny when on TV shows like Shark Tank, one of the potential investors asks the entrepreneur whether the product or service being pitched “is patented.” I find it funny because it is not a matter of whether something is patented or not or how many patents “protect” the pitched product or service, but rather what the scope of the patent encompasses. And that is precisely where the quality of patent plays a pivotal role. Depending on how carefully the patent was drafted and prosecuted, the effective value of the patent to exclude others (i.e., imitators) from practicing the invention may be null or at least very limited, even if nominally the claims of the patent would suggest a broad scope of coverage. The low quality of a patent may very well negate what would otherwise constitute the broad ability to exclude others from imitating the patented invention. Some have stated that a low-quality patent “is not worth the paper on which it’s written.” I strongly and wholeheartedly subscribe to that notion.