Published: Sunday, April 14, 2013
Top 10 Rules of Patent Practice
By Anton Hopen | Smith & Hopen PA
Mediocre patent attorneys should not read this. If you want to be at the top of your game and bring success to your clients, follow these ten rules of practice.
Patent practitioners should follow these ten principles of representation:
- Understand the Invention: Never conclude an invention is either patentable or unpatentable until fully understood. Ask about the problems in the current state of the art. What motivated the invention? Are there other features or applications of the same inventive concept? Be a participant in the discussion. A lawyer understands the law….but a counselor uses it to the advantage of the client.
- Objective of Patent: Know the objective of the client before starting any work. Will the patent be used offensively, defensively, for marketing or asset valuation?
- Continuations: Use continuation practice creatively. Consider issuing narrow, commercial embodiment claims first then file a continuation for broader claims, defined (in-part) by the future activities of a competitor.
- Pilot Programs: Apply procedural knowledge to the client’s advantage. Be aware of every available option and pilot program. Some examples include: (1) Track I prosecution; (2) extended missing parts pilot program; (3) first office action interview pilot program; (4) deferred examination; and (5) patent prosecution highway practice.
- Clear Claim Construction: Cross-reference every claim term in a glossary in the specification and unambiguously link each limitation. Lengthy, unambiguous claims are not necessarily narrower that vague, obtuse claims. Clean and understandable claims make enforcement (e.g., Markman hearings) vastly easier. Help out your patent litigator.
- Illustrative Embodiments: Include numerous examples of operation and application in the patent application specification. Make sure the client understands illustrative embodiments of the invention do not limit the scope of the patent claims. Phrases like “including, but not limited to” are comforting but unnecessary language in a patent specification. It is the claims that define the scope of the invention.
- Keep an Open Mind: When a patent examiner rejects a claim, set your ego aside and carefully consider what the patent examiner is conveying. Directly addressing the examiner’s concerns in a response/amendment is far more productive than immediately assuming he or she is wrong.
- Check the Examiner’s Style: When receiving a first office action rejection, look up recently issued patents from that same examiner. They will likely be within the same area of technology. Is there an acceptable claim structure that examiner approved in another case? There are nearly 8,000 patent examiners currently…while they follow common examination guidelines human nature dictates they will have personal preferences.
- Fee Transparency: Never bill the client "by ambush." Patent attorneys understand the process and what fees to expect short and long-term. Set a high standard for fee disclosure...if any ambiguity exists, make up the difference for the client. It's the patent attorney's ethical and professional responsibility to help the client formulate a patent budget.
- Communication: When a client has a question or request for the patent attorney address it immediately or at least acknowledge the request and advise how long it will take to substantively respond. Call-backs within 24-hours are passé...modern business practice requires call-backs within 2-3 hours maximum.
Use the Golden Rule. Treat the client’s money as if it were your own. For every activity there should be meaningful value conveyed back to the client. Generating success builds long-term client relationships, goodwill and endorsements to others.
© 1999- 2019 Smith and Hopen, P.A.
SMITH & HOPEN® and logo are federally registered trademarks.