Patents that “Hide the Ball”

Photo by Caleb Woods on Unsplash

I had a telephone interview with a patent examiner the other week and in the course of the interview, the examiner said that he really liked my patent application because I did not try to hide the ball with the invention.

I was originally taught to write patent applications by obfuscating the invention. Specifications are required to include all of the information that was claimed, and the way I was taught was to include all kinds of details of the invention without any overview or ‘big picture’ context. The specification was merely a bag of parts from which you could write claims. There was never any structure to the parts, or even a paragraph that described the context of the invention.

The bag-of-parts types of specification was in response to an overreaction to a misinterpretation of some court cases at the time. For example, KSR was generally interpreted to hold that if the applicant provided a ‘reason’ for combining two elements into an invention that the invention could then be ‘obvious’. As part of the response, patent drafters quit including a ‘story’ of the invention in the specification. When taken to its overreaching conclusion, drafters began to remove any overall description of the invention at all, and just included the detailed elements.

Obfuscating the invention is a clever tactic when the patent attorney does not know anything about the technology or does not want to bother to figure it out.

It is much easier to write a patent application that merely recites everything that the inventor says without adding any context. In this mode, the patent attorney/agent is merely a scrivener who adds very little value. These patent applications are dreadfully difficult to read and understand.

Several years ago, I began forcing myself to write a summary or overview of the invention as part of the process of writing claims. Writing a concise summary of the invention that captures the inventive concept in a useful context is very difficult, which is why many people probably skip it.

I actually write two summaries. I write a one-paragraph summary that is used for the abstract and summary sections, and I write a 3-6 paragraph summary that is the first part of the detailed specification.

Writing these summaries forces me to solidify the invention in my head and actually helps me write a better patent application. It also helps me write the case more efficiently. I generally write my abstract/summary as an exercise before I write the claims. The abstract summary forces me to articulate the most important aspects of the invention, which helps in drafting claims that accurately capture the invention. I write the 3-6 paragraph summary after writing the claims to capture the entire scope of the invention, including many of the different versions of the application and, occasionally, some use scenarios.

I have known a practitioner whose summaries included each independent claim. This is very poor drafting practice. His summaries are utterly unreadable to the inventor, the examiner, and any potential infringer, licensee, judge, or jury. The practitioner suggested that the reason for doing so was to show support in the specification for the claims. He included the claims into the summary because he consistently had trouble writing a specification that supported the claims. In other words, his specifications were so badly written that they did not even support the claims, so he resorted to putting the independent claims in the summary to avoid the frequent 35 USC 112 rejections that the practitioner received.

Using my technique, my claims are covered by my summaries because they include all of the large aspects of the invention plus many of the detailed aspects that may be in dependent claims.

On top of that, my 3-6 paragraph summary acts like a table of contents or guide to the entire specification. The figures and the detailed specification are written to loosely coincide with the longer summary so that everything makes sense when someone reads the patent application.

My summaries make my life easier because they force me to get the entire invention in my head. Once I have written the summaries, writing the rest of the specification goes very quickly.

The summaries also make my life easier because the inventors read the summaries and know that I understand the invention. The inventor’s confidence in the patent application goes very high very quickly as they start reading, and they tend to be very happy with the application because it just reads well.