Sunday, May 2, 2010

Unconventional views on what to include in a patent specification

Speaking as someone who drafts patent applications and also looks at those drafted by others, it appears to me to be common patent drafting practice to:
  • Avoid discussing the prior art.
  • Avoid discussing advantages of the invention — even when qualified by "embodiments." 
  • Avoid a clear statement of the inventive aspect(s).
The specific reasons behind these choices are beyond the scope of this post, but suffice it to say that the reasons are grounded in Federal Circuit case law.

Interestingly, there are practitioners out there who go against conventional wisdom, and advocate violating one or more of these rules. Here are three interesting blog posts which not only suggest taking a different approach, but make a case for why their approach is a good idea.


  1. Sadly, discussing the prior art, specific advantages, and clear statements as to inventive aspect(s) all greatly help Examiners understand and therefore properly allow or reject patent applications.

  2. It is indeed said when an applicant's apparent legitimate needs are at odds with an examiner's legitimate needs. It shouldn't take too much imagination to find something that does not expose the applicant to significant harm but still provides to the examiner what he needs. Of course, it's not the examiner's job to find it.

  3. >discussing the prior art, specific advantages,
    >and clear statements as to inventive aspect(s)
    >all greatly help Examiners

    In theory, I'd agree with you. This approach sounds very reasonable: if you hit the references head on, and just explain how your invention differs, then the Examiner can see your reasoning and allow your claims.

    But I've seen too many apps that try this approach, yet end up with 103 rejections where 7 of the 8 limitations are AAPA. Clearly the Examiner *wasn't* convinced by the explanation of differences and advantages to those differences.

  4. X-xmnr, thanks for recognizing that the factors which drive this behavior on both sides are legitimate.

    >find something that does not expose the
    >applicant to significant harm but still
    >provides to the examiner what he needs.

    My opinion is that a clear explanation of the inventive aspects accomplishes this. OTOH, in my experience, discussions of prior art and advantages don't seem to advance prosecution yet still create risks in litigation.

  5. >Clearly the Examiner *wasn't* convinced by the
    >explanation of differences and advantages to
    >those differences.

    OTOH, perhaps the "help the Examiner" approach is a good one, but the implementation is off. That is, perhaps the Applicant didn't claim the differences, or didn't claim differences that were inventive, or didn't discuss the most relevant prior art.

    Perhaps the "help the Examiner" strategy is a difficult one to implement convincingly.

  6. As an attorney at a law firm, one of the irksome positions I find myself in is taking over responsibility for prosecuting an application that was written by someone else at another firm long ago for an inventor who has long since left the company that owns the application and, after reading it, having no idea what was believed to be novel. Examiners can take heart that they are not always alone in not having a clue what the invention is believed to be.

  7. I'll raise you one: client ACQUIRED the company that filed the application so that no one at the new company has any idea why the old company even filed the application.