• Carol Egner

Misconceptions of the First-Time Inventor Seeking a Patent

In meeting first-time inventors over the years, we have encountered some inventors with some interesting pre-conceived ideas about working with a patent attorney to file a patent application. Here are a few of those ideas.

Patent attorneys live like the attorneys on the lawyer tv shows like Suits or Law and Order.

No, not much. We do not defend or prosecute criminals. We do not sue or defend clients in civil matters involving defective products or disputes over a will – the stuff that might make good drama for television.

In our firm, there is no drama of interoffice relationships and no gossip at the water cooler. Our firm doesn’t even have an office!

We patent attorneys have to learn criminal law, civil procedure, trusts and estates, evidence, constitutional law and a whole bunch of other subjects in law school. However, you probably would not want to consult a patent attorney if you have a problem in anything other than intellectual property law.

To explain the invention, the inventor needs to start by teaching the patent attorney Science 101.

We are not the pre-law political science majors you may have known in college. We are not English majors, but we know how to write well. We have at least bachelor’s degrees in science or engineering. Many of us have worked in industry or in academia before going to law school, and many of us have advanced degrees. Mostly, patent attorneys are science or engineering nerds who went to law school. We may wear suits at least sometimes, but don’t let the suits fool you.

Patent applications should be written like journal articles.

To the inventor used to reading scientific papers, patent applications can seem boring and repetitive. If you are looking for a description of that thrilling moment of scientific discovery or a breakthrough in technology, a patent application is not the place to find that. The job of the patent attorney is, at its simplest, to write the patent application to best describe an invention so as to get the broadest rights for the inventor/patent applicant. Making the invention look as if it is the beautiful result of a logical progression of experiments, and making connections to the work of others in the field, which you might find in a scientific paper, does not contribute to this best description of the invention. This content usually found in a discussion section of a scientific paper, if included in a patent application, could suggest to a patent examiner that the invention does not meet the requirement that an invention must be non-obvious.

A patent application can be used as advertising material.

Don’t expect a patent attorney to describe a product in the same terms as those used in marketing materials. The description of an invention should incorporate terms with well-established meanings. Language that a marketing department would use to promote a product and words that appear to be from a subjective evaluation of the product are likely to be seen as “indefinite” in patent law and do not belong in a patent application.

If a patent application is a legal document, then the inventor should just send the patent attorney a written patent disclosure, a draft publication, or internal company report describing the invention, and then stay out of the way of letting the patent attorney do all the work of drafting the patent application.

Not at all. The inventor is the expert on the invention. It is essential for the patent attorney to communicate effectively with the inventor to understand the invention and all the variations that should be claimed as part of the invention. If the inventor has performed experiments or has technical data that describe properties of the invention, these should be included in the patent application, usually in an “Examples” section. The inventor should review every part of the draft patent application.

This is the really cool part of the job of a patent attorney – learning about a new invention. Getting a Notice of Allowance from the patent office that a patent application will be granted is good, too.

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