How to Maximize Your Patent

Half of current patents are worthless. Is yours?

There are somewhere between 2 to 4 million patents currently in force today. Unfortunately many of these patent are nearly worthless. Over the years, estimates as to what percentage of patents are useless often exceed 50%. How can you maximize your patent? Avoid these 4 common mistakes:

  1. The claims of the patent are too narrow. A competitor may be able to “work around” the patent by changing a single, perhaps relatively unimportant feature of the claimed invention.
  2. The claims of the patent are too broad. The patent is so vague and ambiguous that it becomes impossible to enforce in an infringement law suit.
  3. The specification of the patent may only describe one way of building or using the invention. This limits the coverage of the patent’s claims or fails to support the claims of the patent in extreme cases.
  4. The specification of the patent uses language that is at odd with the inventor’s true intent. Thus the USPTO or courts have an issue with interpretation vs intent.

With these points in mind, there are a few best practice to follow to insure a valuable, high quality patent

Describe Your Invention

Describe your invention in detail with as many variations and alternative designs as possible. Give as much detail as is possible, as well as at least one concrete example of a use of the invention. In years gone by, such an implementation and use of an invention was referred to as the “preferred embodiment” or the “best mode” of the invention. It is not necessary to do so, and in some respects, it is undesirable.

Alternative designs describe additional versions of an invention. You should avoid characterizing or implying in any way that there is only one way to build and use the invention. For example, in the case of a mechanical invention, an innovation that increases the efficiency of one machine, might also increase the efficiency of one or more other machines. Describing these in the patent shows how the invention is not limited to one embodiment.

Variations reflect how details of a specific embodiment can be modified without departing from the scope and the spirit of the invention. For example, an invention might be built using different materials, have varying physical dimensions, be powered using varying means of power or be implemented (as in the case of software) on a variety of different platforms.

Include a Variety of Claims

Claims can cover machines (also called apparatuses or systems), processes (also called methods), articles of manufacture and compositions of matter. Typically, a patent can claim more than one of these classes. Thus, for example, in a patent one may be able to claim a machine, describing the machine’s physical structure, and a method of using the machine. Claiming in multiple classes increases a patent’s coverage.

The independent (“top-level”) claims of the patent should be drafted as broadly as possible. Such claims should include only those elements of the invention, described using the broadest possible terms, that distinguish the invention over the prior art known to the inventor. Such claims might only have three or four elements, at least at the time of the filing of the application.

For each independent claim, a variety of dependent claims should also be drafted, ranging from from relatively broad dependent claims to very narrow ones. For example, for a machine claim, dependent claims might add new components or specify the use of specific materials. For a method claim, dependent claims might add new steps, or further qualify the details of how a step could be executed. Note well, any such claims must be supported by the description of the invention in the specification of the patent.

Draft Your Patent With Current Best Practices in Mind

How can you maximize your patent?

Patents can appear to be relatively straight forward: all you have to do is describe your invention and write a few claims. However there are many traps for the unwary. Drafting patents is as much an art as a science. Best practices are constantly evolving. The only way to really keep up with them is to keep an eye on cases decided by the Court of Appeals for the Federal Circuit. Some best practices are counter intuitive or even downright puzzling, for example:

  • Never use the word “invention” in the specification.
  • Never refer to the prior art, characterize it or criticize it.
  • Never define objectives for the invention or the problems it solves.
  • Avoid using certain words in claims, such as “means” or “modules”, which can lead to a narrower coverage of a claim.
  • Explicitly define terms used in claims.

Some inventors have had great luck filing their own patents. However after all the time and money you spent developing your invention, why risk it? Let an experienced patent attorney help you maximize your patent.

Law 4 Small Business, P.C. (L4SB). A little law now can save a lot later.

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