Author：ZeMing M. Gao, business strategist; IP attorney (USA); Company-as-a-Product (CaaP) expert; IP builder/strategist/economist; blockchain strategist/economist; tokenization and smart contracts expert; SEC/FINRA Investment Banking representative, Chief Advisor at Caapable.com advising multiple companies; email: gao@caapable.com
Patent fence building is difficult to do. It is both science and art. It requires strong skills to do a reasonably good job, and talents to do a very good job. The ideal skill set for a patent attorney is a unique combination of legal skills, scientific and technological knowledge, and good business sense. In addition, a patent attorney does not spend all his time writing patent applications but must effectively communicate with others, particularly with patent examiners during the patent prosecution process. Because such communications are framed upon a complex body of law and regulations and involve technical details of the invention, special communications skills are required of a patent attorney.
Much more than a set of basic skills is required for preparing and prosecuting a strong patent. Merely having sufficient understanding of the invention and even strong writing skills does not necessarily make one competent for preparing a patent application and procuring a patent. These are necessary skills. Having someone who lacks even these basic qualifications prepare and prosecute a patent probably amounts to a level of being reckless and irresponsible.
First, the patent attorney must truly understand the invention. We are not talking about generic understanding of a technology at a managerial level here. We are talking about specific understanding at the engineering level. The more thorough the patent attorney understands the invention, the better chance there is to build a good “patent fence”. If you have worked with a good patent attorney, you might have been surprised by how well the attorney actually understands the invention.
Often, the patent attorney may even understand the certain respects of invention better than the inventors themselves. This is not to suggest that the patent attorney would be a better inventor than the inventor. There are two things that make an inventor an inventor: (1) the inventor conceives the invention with a stroke of genius; (2) the inventor not only understands the invention, he typically also knows how to make or do the invention. A patent attorney does not necessarily have either of these qualifications.
The reason why the patent attorney must understand the invention very well may again be explained using the land-and-fence analogy. Recall that the fence must fit the land. In order to build a fence that not only encircles as much land as possible but also blocks every possible pathway for access to the “treasure” in the land, the patent attorney must thoroughly understand the “topology” of the land. This includes both the major landscapes and detailed land features. The detailed “topology” of an invention can be difficult to determine even if the invention itself may be seemingly simple, and can be extremely difficult to determine when the invention itself is complicated.
Second, patent fence building is governed by a complex body of law and regulations. The patent attorney therefore is in every sense a true lawyer. A complex body of law and regulations is not to erect artificial barriers and make the inventors’ lives more difficult. It is necessary. Because patents involve property rights, there would be chaos if everyone were allowed to just claim and grab whatever he thinks belongs to him. The law is meant to bring about order.
To achieve this goal, patent fence building must be capable of precisely defining the nature and boundaries of the property and further capable of being justly and logically adjudicable (i.e., legally solvable when disputes arise).
The effect of a complex body of law and regulations is firstly reflected in claim drafting. A unique mixture of both scientific and legal language, claim drafting is both science and art. The particular style of language and structure is absolutely necessary, not for the purpose of looking formal, but for the purpose of serving as a legal instrument to precisely define the boundaries of each piece of intellectual property that is claimed. Claim drafting is perhaps the most crucial part of a patent attorney’s job that differentiates a great patent attorney and not-so-great patent attorney.
In addition, claim language typically is the focus of the subsequent patent prosecution process after the patent application has been submitted to the patent office. Patent prosecution is the bargaining process between the applicant (through his attorney) and the government (through the examiner). The core of the bargaining is a conversation centered upon, and structured by, the claim language. How the claims are drafted may determine a course of this bargaining process.
The law and regulations also affect the drafting of the other parts of the patent application, including background, summary, drawings, abstract, and most important, the detailed description. These other parts are often collectively called “specification” (though strictly speaking, the specification includes claims as well).
The specification of a patent application is far more than just an expanded, beautified and formalized report of the invention. The main function of the specification is to provide both scientific and legal support to the claims. This unique function is the reason why patent writing is quite different from regular technical writing familiar to scientists and engineers. The goal of normal technical writing is quite singular, which is to explain a concept or object so that the reader can understand it. The goal of patent specification drafting is much more complex. Although it certainly must also clearly explain the concepts and subjects involved, it is much more than that.
In addition to achieving clarity, a patent specification must satisfy a number of interrelated legal requirements such as enablement requirement, best mode requirement, and specific and distinctive support to the claims. These legal requirements are very basic and must be satisfied by every patent (even those not-so-great patents), because they relate to the validity of the patent. Failure to satisfy these requirements would result in an invalid patent, destroying the bottom line of the patent without even reaching the question of the quality of the patent.
In this regard, it must be noted that an issued patent comes with no warranty that it is valid. An issued patent is only presumed to be valid and could be, in fact frequently is, found to be invalid during litigation. A good patent attorney understands that a strong patent must first be a valid patent, which not only survives an examination process during prosecution but will also withstand any possible litigation in the future.
A good patent attorney also understands that a strong patent goes further beyond satisfying the basic legal requirements related to the validity of the patent. A carefully and skillfully prepared patent specification provides strong support to the claims in that it not only warrants the validity of the claims but also forms a strong foundation to support the broadest possible scope of the claim coverage.
Providing specific and distinctive support to patent claims and providing the basis for the broadest possible scope of the claims are inherently competing requirements and must be handled skillfully. The law is highly complex in these areas. So complex is the patent law that the law is interpreted by a specialty appellate court called Court of Appeals of the Federal Circuit (CAFC) in the US. Factors like these make patent drafting and patent prosecution both scientific and legal, requiring a unique set of skills and talents.
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