The Essence of a Quality Patent Application
In the first few years of my career as an associate patent attorney, I often thought about these questions:
What does a quality patent application actually look like?
Who or what is the authority on quality?
More fundamentally, how do I know if I did a good job?
One of the quirks of patent law is that it provides remarkably little meaningful feedback to the practitioner.
If you are an individual or startup-type client, you may hire an attorney to prepare a patent application and you probably have no idea if it is any good. This is a little bit different from many other areas of law where the client seeks a particular outcome, e.g., an acquittal, business deal, etc., and can clearly understand whether that outcome was achieved. Unless a patent is litigated – and most are not – the client will never truly know whether their patent achieves its objectives. Even in that case, it would be hard to say whether the patent application was substandard.
Where else does a patent attorney look for feedback? The mechanisms are very delayed and in many ways decoupled from important issues of quality. Patent prosecution typically unfolds over several years. By the time an examiner issues a first Office Action, the attorney receives only a narrow type of feedback: whether a particular examiner believes certain claims are patentable over a particular set of prior art. That tells us something, but not very much about the overall quality of the application. The ultimate test comes years later, if at all. A patent may someday be licensed, challenged in an inter partes review, asserted in litigation, or scrutinized by experts during claim construction. Only then do many of the drafting decisions made years earlier become critically important. The reality, however, is that most patents are never litigated. Consequently, many attorneys spend an entire career with relatively few opportunities to learn whether their drafting philosophy truly stood the test of time.
Most feedback and training on patent quality comes from an entrenched infrastructure whereby younger attorneys learn from experienced practitioners, who learned from the generation before them. Through quality mentorship, the young attorney develops an accepted understanding of what "good drafting" looks like. Additionally, an attorney may be fortunate to work with sophisticated technology companies that file patents in enormous numbers and are frequently involved in licensing and litigation. These clients are in touch with the types of things that matter.
I was fortunate enough to have both of these feedback mechanisms in place through the beginning of my career. Over time, several principles became central to my approach.
The Claims Come First
A guiding principle of patent law is that the claims define the "metes and bounds" of the invention. Stated another way, the claims are the whole ball game. More than anything else, a patent application will rise or fall depending on how the claims define the protectable scope of the invention. Everything else in the application exists primarily to support them. For that reason, I spend far more time thinking about claim language than any other part of the application.
A common misconception is that the claims with relatively few words are necessarily “broad” and therefore good. That is not exactly true. Broadness is not determined by the number of words. It is determined by whether the words accurately identify the essential features of the invention while avoiding unnecessary limitations. In fact, quality claims are often quite detailed when describing the technical relationships that define the invention. The additional language is not there to narrow the claim unnecessarily. It is there to make clear exactly what makes the invention different.
I was taught to focus on the readability of the claims. Good claims have an internal logic. One limitation naturally leads to the next. Related concepts appear together. The reader should gradually build a mental picture of the invention as the claim unfolds. Even someone unfamiliar with the technology should be able to visualize how the claimed elements interact.
The Specification Gives Life to the Claims
Once I am satisfied that I have a set of claims that adequately capture the invention in a way that is clear and encompasses the full breadth of any possible variation, I turn my attention to the specification. While the specification does not directly define the scope of protection, it performs a critical supporting role.
A good specification serves many purposes. It provides context for claim construction. It supplies support for future claim amendments. It creates opportunities for continuation practice. And, perhaps most importantly, it explains the invention completely enough that others can understand and practice it.
I was taught that the “bones” of the specification come from the claims. To the extent possible, the literal language of the claims should be used for the first sentences of each specification paragraph. From there, the specification adds flesh to those bones. It explains the important claim terms, illustrates how they function, and provides the context that may someday influence how a patent examiner or court construes the language. This is especially important for the claim terms that I believe are the most critical, i.e., those terms that pertain to the critical features that define novelty or those terms that are strategically and carefully chosen to distinguish over existing technology. Ideally, a specification should “force” a particular claim construction, meaning that it eliminates any argument that a different or non-preferred meaning of the term was contemplated. If a court later has to determine what a disputed claim term means, the specification should leave as little room as possible for competing interpretations. There are many ways to do this. Some are heavy handed and others are more subtle. A skilled patent attorney has developed a sophisticated sense of how to do this.
At the same time, I think a good specification should tell a coherent story. Patent applications are often difficult to read, especially to the layperson, but in many cases also to highly skilled technical readers. Some complexity is unavoidable. Nevertheless, the objective should always be to communicate as clearly as possible. It is possible that someday, portions of that specification will be read to a jury with no technical background. While no patent application can eliminate the need for skilled litigation counsel, it should strive to make the technology as accessible as the subject matter permits.
Inventors often focus much of their attention on why their invention is great. It is only natural to believe that a patent application should devote substantial attention to selling their invention. In fact, this is probably the least important part of the specification. Certainly, the invention's advantages deserve mention where appropriate. But lengthy discussions of why the invention is wonderful rarely determine the outcome of prosecution or litigation. What matters most is not why the invention is valuable—it is what the invention is and how it works.
Finally, to the extent possible, the patent specification should be concise. One of my favorite principles articulated in the USPTO patent manual is that a patent “need not teach, and preferably omits, what is well known in the art.” A patent attorney's job is not to overwhelm the reader with volume. In many cases, a discussion of technical concepts that are not central to the understanding of the invention is useless and in fact may be harmful. The goal when drafting a patent application is to “get in and get out” with as little wasted motion as possible.
Final Thoughts
After more than a decade of drafting patent applications, I still believe quality is difficult to define. But I have come to believe it has less to do with clever writing than careful thinking. A quality patent application begins with claims that capture the essential technical contribution of the invention in clear, deliberate language. It is supported by a specification that explains those claims, preserves future flexibility, and tells the invention's story without unnecessary distraction. Ultimately, the measure of quality is not whether the application looks impressive on the day it is filed. It is whether, years later, it continues to accomplish the purpose for which it was written.
