The drafting of a patent application is a multifaceted activity, bringing together technical and legal expertise. Often, the business aspects of how the legal protection of enforceable patent claims will secure the desired monetization channels are neglected. However, the basis for crafting a suitable patent disclosure during the patent drafting is hinged on a deep understanding of the technology at hand, and a thorough command of the legal framework for the jurisdictions being considered for filing during the patent-drafting process. While this is the realm of seasoned patent attorney in a patent prosecution firm, clients are encouraged to familiarize themselves with the basic vernacular of patent law and IP strategy & management. Below we have shared with you a brief overview of the key touchpoints to be aware of.
To begin with, the “prior art” refers to previously-published literature including patents, scientific journal articles, product literature, and dated web pages. An invention is said to have novelty if it is not anticipated by any prior art. An invention is said to be non-obvious (or have inventive step) if any combination of prior-art references would not make the invention obvious/predictable to a “person having ordinary skill in the art” (also colloquially referred to as a PHOSITA).
In checking for this non-obvious criterion, the PHOSITA may not actually be an individual, but may be a group of individuals (such as a research team or corporate development group). The non-obvious requirement leaves a lot of room for interpretation, and has been the subject of much criticism and calls for reform to clarify what exactly is meant by obvious and predictable. Additionally, there are further criteria for meeting the requirements for the specification disclosure in the patent-drafting stage.
A few words should be said about the “redrafting” of a patent application. Often inventors decide to save money at the early stage of the patent application process by submitting provisional patent applications written by themselves. Such clients approach us when it is time to file a full patent application claiming priority to their provisionals. In a different vein, we also have clients who come to us to file a subsequent patent application after having another patent prosecution firm draft and file an initial application for them. It can’t be stressed enough that besides the issues described here that need to be adequately addressed, it is critical that a patent application has clarity in its layout and presentation – this includes the drawings, description, embodiments, and especially the claims which need to support the enforcement of a desired IP strategy & management framework.
We have had inventors bring their investors to strategy meetings prior to the expiration of a patent-priority right in which the investors say they are interested in the IP, but that they simply find the originally-filed patent application confusing due to the way it was drafted. Questions arise regarding what the patent application covers, whether it will survive prosecution, and how it will be enforced. The redrafting of a patent application can change the entire outlook regarding its success in the patent-office docket, in the marketplace, and against would-be infringers by redirecting the invention into a different IP strategy.
FlashPoint IP, a leading patent prosecution firm, factors these wide-ranging aspects into the process of securing patent protection, whether in performing a patent search and patent analysis of the prior art, engaging in patent drafting of applications, selecting how and where to file, or prosecuting your claims to an invention to help you maximize value in an extensive array of practice areas. Our patent attorneys are adept at synthesizing the many facets needed to create a winning formula for your IP. Contact us to discuss your options regarding IP strategy and positioning, and how best to secure your rights.
