Friday, December 11, 2009

Telling a Story in Patent Drafting: Toot Your Horn, Cautiously

A bare-bones approach to patents has been proposed by some highly respected practitioners, an approach in which "unnecessary" elements of a patent such as a background section are eliminated in an effort to avoid some potential pitfalls that have been seen in litigation when the Federal Circut imported unintended limitations into the claims or took other steps that limited patent coverage. However, in light of KSR and other recent judicial trends, there may be a case for more story telling to create the case for non-obviousness. If the patent never gets allowed in the first place, making it less susceptible to judicial whims in litigation will do nothing for your patent. There are many pitfalls to avoid, but I believe story telling is now increasingly important to get the patent allowed and then to lay a foundation for others to understand it.

In fact, if your patent will be considered for licensing or sale, it makes a lot of sense to craft your patents with the marketing story in mind. Intellectual assets that harmonize with your marketing story can be especially valuable and helpful in closing deals. If your competitive advantage comes from a particular aspect of a method or product, is that aspect the focus of at least one patent? Does the story in the background section align with what you will one day be telling a client to interest them in the value of your estate?

I've seen some products that tout nanotechnology and boast of their patents, but the claims have nothing to do with nanotechnology. Shouldn't they at least have nanotech in some of the dependent claims? I've seen many patents where the invention is presented in a dry, straightforward way - almost as if the invention were an "obvious" and straightforward solution, albeit novel, to a known problem. That approach might not succeed anymore.

Many times the most clever part of an invention was the recognition of what the real problem was that needed to be solved. Once the problem is known, if the solution is pretty straightforward, the invention may face obvious challenges because an examiner is going to consider what was "obvious to try" for one of skill in the art facing the problem you have solved. If the problem statement involved discovery and surprising insights to even frame it in the first place, then tell that story. Make it clear that there was a process of discovery and surprise in even getting to the problem to be solved. That is a story you are going to need to tell to the Examiner sooner or later--might as well make it clear and hard to miss from the beginning.

Story telling is key in the art of persuading. Examiners enjoy a good story as much as anyone, and can sometimes better understand why an invention really is patentable when the story is told properly.

Toot your own horn, but carefully. Don't suggest that your invention is capable of all sorts of advantages in any way that might suggest that all of the advantages can be obtained in any one embodiment, for an infringer might escape if not all of your advantages are provided. Don't rely one or two versions or alternatives - give many to provide support for your broadest claims. Be very cautious about statements interpreting other patents or other prior art lest an mistake or overly critical statement come back to bite you. But don't be afraid to tell your story of discovery and adventure in bringing forth your product and overcoming the barriers that might have held back those of merely ordinary skill in the art.