The Worth of a Patent (Application): Well Drafted Verse Self-Written

It bears repeating that technology-based Entrepreneurs usually need a well-written patent application.  This Blogger has inherited applications that were written by talent-challenged drafters.  And we almost always hit a train wreck at some point.

First, the Patent Office will perform an "initial examination." During this phase, they will look for everything from trivial grammatical errors up to more serious issues such as confused writing and hopelessly drafted claims. All of these issues will likely occur in Inventor-written applications. Straightening these issues out, if possible, can cost thousands of dollars.


Eventually the Patent Office will perform a substantive examination. At that time, the claims and written description come under severe scrutiny. If the claims do not measure up (even seasoned Patent Attorneys have issues with claim drafting) they will be rejected as being unclear or missing the point(s) disclosed in the application.


Of course, prior art will raise its ugly head at this point. And the best defense against prior art is having a detailed, thorough application. Otherwise, no recourse might exist to argue around close prior art.

Assuming that the application issues as a patent, its worth will largely be determined by the strength of the claims and the backing those claims have in the description. Poorly written claims can be designed around leaving the patent virtually worthless. This Blogger performed one analysis in which all we had to do was not use a “coil spring” to actuate a particular device leaving us free to move ahead with a competing product.

Lack of a good description in the application can also render a patent subject to collateral attack. And that is doubly true in this age of post-grant reviews of various sorts at the Patent Office. In short, a non-Patent Agent/Attorney has very little chance of drafting a well-written patent application.

We at the Villhard Patent Group would welcome the opportunity to discuss your Intellectual Property. You can find more information about us at www.villhardpatents. Or you can contact us at 512-897-0399. We look forward to hearing from you.

HOPE SPRINGS ETERNAL: SOFTWARE AND BUSINESS METHOD PATENTS

Recent decisions indicate that the Federal Circuit Court of Appeals (the court that counts for Patent Law) may be moving toward a “technical arts” test for determining whether software (and business) methods are patent “eligible.”

In many ways this represents good news. For one thing, those of us advising Entrepreneurs can at last give a reasonably good forecast as to whether certain software methods will hit the patent eligibility road block. And if that trend continues (an “if” admittedly) it also tells those of us helping entrepreneurs what to focus the applications on (the technical merits of the idea).

The emerging (perhaps?) trend also lends Entrepreneurs a hand in determining whether to move forward with a patent application for their ideas. And, on a similar note, it helps them identify what to focus on in their discussions with their Patent Attorney. In particular, both the Entrepreneur and Patent Attorney should focus on how the idea helps a computer work better. Better, of course, can be defined in terms of faster, more efficiently, more reliably, and/or doing some other technical feat not previously possible.

The first three points should be self-explanatory. But, perhaps, the latter point needs a little elaboration. In one case, the Fed Circuit found a “self-referential” database to be patent eligible. In short, this new technology included a feature in the software that allowed a database to include a link to itself – self referential. And that was a enough to get that application over the eligibility threshold.

Thus, for now, we at the Villhard Patent Group continue to recommend moving forward with (at least provisional) patent applications for software/business methods. Of course, as we have written in other posts, Entrepreneurs in the software/business methods arena should be aware that patent eligibility will be an issue with their applications.

We at the Villhard Patent Group would welcome an opportunity to discuss this issue with you with regard to your idea. We can be reached at 512-897-0399 or contact@villhardpatents.com. For more information about us please see www.villhard patents.com. We look forward to hearing from you soon.