• "10 Things I Have Learned From Prosecuting 100 Patents" A Somewhat Irreverent Guide to the U.S. Patent System
  • September 19, 2006
  • Law Firm: Clausen Miller PC - Chicago Office
  • On May 23, 2006, the United States Patent and Trademark Office issued the 100th utility patent I have written and prosecuted (U.S. Patent No. 7,048,118, “Support Post With Locking Feature”), the last 14 while I’ve been with Clausen Miller.  The journey to 100 patents has been interesting, rewarding and, yes, fun.  I love what I do, and I’ve learned a few things along the way.  Such as:

    1. The answer to the inventor’s oft-asked question, “How much information about my invention do you need to write a patent application?” is “As much as you can give me.”
    2. When writing a patent application, start by drafting the “claims” — those single sentence numbered statements found at the end of a patent that define what the patent covers and determine its scope.  This forces the patent scrivener - and the inventor - to focus on the essence of the invention, i.e., what makes it unique and patentable.
    3. Ruthlessly edit the patent claims before submitting them for examination.  Go through them word by word and strike any language not needed to define or distinguish the invention.
    4. Draft claims of varying scope.  Include at least some claims that -(hopefully) will be allowed after the initial examination without amendment.  Since the United States Supreme Court’s decision in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushi Co. Ltd., 535 U.S. 722 (2002), amending a claim element for reasons related to patentability creates a presumption that the amended element should be given no range of equivalents during an infringement analysis.
    5. When writing a patent claim for a new windshield wiper, avoid claiming the entire car.  See rule 3 above. 
    6. Most patents are improvement patents.  There’s very little under the sun that’s completely new.
    7. You don’t have to actually make your invention to be able to patent it.  However, it’s got to work.
    8. Having a patent does not necessarily give you the right to practice your own invention, since your patented invention might also be covered by someone else’s patent.
    9. In some ways the opposite of having a patent is having a trade secret.  The former tells the world how to make and use the invention but grants its owner the exclusive right to do so for a period of twenty years.  The latter is known to no one except its owner but does not prevent others from independently discovering, making and using it.
    10. Patents, like Supreme Court decisions, always issue on Tuesdays.