Say what you mean and mean what you say
This is one of the more important pieces of advice that I received from one of my mentors early in my career and these words have stuck with me over the years. As a patent practitioner, it is often tempting to try to “impress” your clients in order to justify why they pay for your services and expertise. A common way to do this is to show that you are actually able to obtain a patent for them that has a broader scope than they were originally envisioning. To achieve this goal, a common strategy is to use what is referred to as “broadening” language, e.g., saying “fastening means” instead of “a screw.”
While such broadening of the invention often can be useful, it is important not to get ahead of yourself and lose sight of what the actual invention is. Also, using such broad language can often complicate the “prosecution” part of the application process, in that often the applicant needs to expend considerable time and energy on explaining the various concepts to the examiner, and then often to narrow them back down (at least to some degree) so they do not read on existing technologies. Last, but not least, it is important to remember that if your patent application is allowed and your patent were to end up in litigation, the people who will decide the outcome of the trial is a jury consisting of 12 laypersons. What do you think makes most sense in the mind of 68-year old jury member without any engineering experience – “fastening means” or “screw”?
So, in summary, my approach to patent application drafting is that if you can broaden your client’s invention and get them better protection, that is wonderful. However, it should not occur at the expense of losing track of what the real invention is, or by making the patent sound so “vague” that it is not clear what the patent actually covers. I often receive appreciative comments from inventors who tell me that they can read the application and actually understand what it is about, rather than it just being some form of “legalese” or “patentese.” Compliments like these not only make me happy, but they also give me the comfort of knowing that I have a proper understanding of the inventive concepts and that it is less likely that there are problems with the application that might come back and haunt us later. So until I’m proven otherwise, I will continue to say what I mean and mean what I say.
Mollborn Patents | Patent Protection Made Easy
Fredrik Mollborn has been helping companies protect their intellectual assets since 1997 in the U.S. and abroad. If you are looking to secure your intellectual property, reach out to Mollborn Patents for a consultation.