Unexpected patent drafting considerations.

One of the more frequent observations I get from clients is that their patent attorney appears to be only concerned with meeting the legal and technical requirements. This is particularly so when drafting patent specifications where quite rightly by the attorney’s perspective the key information to be extracted is all about the invention itself. Yet, taking the time to understand more the business behind the invention can lead to patent drafting practices that benefit the client more and illustrate better the relevance of a patent to their goals.

My philosophy is that a patent specification must be drafted to take into account not only the legalities under patent law, but also to

Ó       Forestall patent examiner’s objections (which can be incredibly expensive to overcome),

Ó       Identify multiple fields of application to open up licensing opportunities

Ó       Cover off possible technological advancements over the patent life (usually 20 years)

Ó       Deter potential infringers so there is little wriggle room for them to design around the patent

Ó       Attract investors by giving confidence around protection and potential

Ó       Be a negotiating tool

Ó       Stage a valuable piece of property for purchase

Ó       Be a credible legal document able to support patentee rights and attacks from competitors

A good IP strategy before the patent drafting process can pull out the information needed to develop a patent specification to be more than just a legal document.