Are You and Your Patent Attorney Challenging Each Other?

Since we have been living with managed medical care for some time, many people have become accustomed to the idea that they need to act as their own advocate when dealing with medical professionals.  Thus, we have become more comfortable with questioning our doctor’s opinions and the bases for them and with the idea that such questioning is not only a patient’s right but also is necessary to ensure quality care.

It is similarly important for clients to challenge their patent attorneys’ decisions and analyses and vice-versa. Your patent attorney will never know your business and goals as well as you do.  Conversely, you will (most likely) never know the patent law as well as your attorney.  Patent law can be difficult to understand and there are many misconceptions about how the law works and what protection it provides.  We have frequently seen lay people make important business decisions based on fundamental misunderstandings of how patent law works.  Many of these misunderstandings arise from the following aspects of the law:

1. A patent’s claims, and not the specification or drawings, describe the scope of protection.

2. Patents provide a negative monopoly or a right to exclude. They do not provide a right to practice the claimed invention.

3. Patents are territorial, and there is no international patent that provides worldwide protection.

4. The scope of protection provided by a patent does not change based on the products the patent owner makes. It is determined by the document itself regardless of what the patent owner does commercially.

5. A patent needs to describe more than the novel concept. It needs to describe a process, machine, manufacture, or composition of matter in enough details so one of ordinary skill can make and use it.

 Are You Challenging Your Patent Attorney?

One area in which clients should challenge their patent attorneys concerns the scope of the clients’ patent protection. Items 1 and 2 above make it particularly difficult for lay people to understand the scope of their protection.  One thing that is most helpful is to discuss “what if” scenarios with your patent attorney. For example, ask whether specific products are likely to infringe your patent claims and whether certain changes will avoid infringement.  Addressing specific scenarios is the best way to avoid misunderstandings. When clients ask whether a particular product is “covered” by a patent, they may not realize the ambiguity in the question from a patent law perspective.  It can mean several things, including: 1) whether the product is described in the specification, 2) whether the claims recite features of the product, and 3) whether a competitor will infringe the patent by copying certain aspects (i.e., the aspects the client thinks are important) of the product.

Also, any limitations or features that are included in your patent claims will limit (narrow) the scope of the claims.  Ask why they were included.  Perhaps there was a key piece of prior art that had to be distinguished.  How does your attorney think the claim language will be interpreted in an infringement lawsuit? Perhaps there is better and broader language that can be used.  If the product has changed, will the current claims cover it?  Can new claims be drafted in a current application to cover it or is a new application required?

Your patent portfolio is too important to leave to chance.  It is important for you to understand what protection it provides and does not provide.  You have a right and a need to understand it.

Is Your Patent Attorney Challenging You?

In our view, a good patent attorney also challenges the client’s understandings of how their patent protection affects their business and tries to ensure that the client is not laboring under any misunderstandings. Does your patent attorney simply accept your patenting decisions without question, or does he or she question what assumptions you are making and premises you are relying on in making those decisions?  A good patent attorney will challenge you by questioning those premises and assumptions to make sure your decisions are likely to produce the desired outcomes. Given the complexities of the patent law, an attorney that unquestioningly accepts your decisions and conclusions as a fait accompli will not prevent you from going in a wrong direction.

Item 5 in the list above is one area where it is particularly important for patent attorneys to challenge their clients.  We run into this item frequently when preparing patent applications, especially for inventors who are not experienced with the patent process.  They are often reluctant (and sometimes unable) to supply details of how embodiments of the invention would work. This can be particularly problematic when an inventor comes up with a new idea in a technology area with which he or she lacks deep familiarity. Nevertheless, it is important for the patent attorney to challenge these clients to give thought and consideration about the details of implementing their invention so that the application will be sufficiently “enabled”, i.e., teach one skilled in the art how to make and use the invention.  It is also important so that further refinements of the invention can be developed which may be used, if necessary, to distinguish the prior art.

Unless your attorney challenges you to provide this information, you could spend significant sums of money on a patent application only to find it rejected by the Patent Office, or once it issues as a patent, invalidated in court.  Attorneys who challenge you in this manner better serve you and protect your interests.