Communication Hygiene: Things You Never Say To Your Patent Attorney

Good news in writing – bad news by phone.

Inventors have extraordinary power in the patent process, especially in litigation. An inventor’s opinion or comments can often be twisted during litigation and ultimately, used to invalidate a patent or discredit the patent owner.

There are things you should never say to your patent attorney, at least not in writing.

My rule with inventors is that they should never – ever – discuss the patent claims via email. We always – always – have a discussion over the phone/video to discuss claims.

The patent claims are the strict, specific legal rights that we are asking the examiner to grant us.

As applicants, we have the right to ask for any type of claim in any manner, and we have the right to a patent, unless one of the prohibitory provisions of the statutes applies. In re Stempel, Jr., 241 F.2d 755, 44 CCPA 820.

This means that we are always entitled to a patent, unless there is a statutory reason why we cannot. (The statutes say the patent must be novel and not obvious, for example.)

The claims are always the focus of any litigation, and any comments made by an inventor can have a huge impact during litigation.

Any comment – no matter how seemingly innocuous or well intentioned – can be blown up on a giant poster, placed on an easel, and shown to a judge and jury by the opposing side.

Comments like “this isn’t my invention” or “that is prior art” can be devastating during litigation.

Never write declarative statements about the claims. Always frame the issue in a question.

Simply worded comments, like “that is prior art,” might seem simple, but they can be interpreted as very strong, absolute, authoritarian declarations when taken out of context.

If you do not understand what the patent attorney is doing, put everything in the form of a question. If at all possible, make the questions as innocuous and vague as possible. For example, highlight a portion of the claim that you do not agree with, but only say “Can we discuss this?” or “Would you please explain how this works?”

Then follow up with a phone call.

This avoids the trap of inadvertently making a statement that can be take out of context in litigation. If you always pose questions to discuss, you never leave a written trail that can be twisted and misunderstood.

Why the phone call and not an email discussion?

One reason why a phone call is always needed is that we do not want to create a written paper trail of comments that can be taken out of context.

The second reason, and arguably equally important, is that claims always need a back-and-forth discussion to fully understand and appreciate. Claims have a hierarchical structure with an independent claim that stands on its own, plus a hierarchy of dependent claims that add limitations.

The claim language needs to be understood in the context of litigation. If a competitor does A, B, and C, they infringe. It does not matter if they do D, E, and F: we got them with just A, B, and C.

In these cases, we may not include the ‘key’ elements D, E, and F in the independent claims, so they show up later in the dependent claims. The inventor may really – really – want their limitations D, E, and F in the independent claim initially. Once we talk it through, the inventor may validate what the patent attorney was thinking initially, or we may need to adjust the claims based on how effective the claims would be in an enforcement action.

What about attorney/client privilege?

Isn’t all the conversations between an inventor and attorney protected under attorney/client privilege? Maybe. But maybe not. Either way, it is best that inventor comments never are documented, that way they will never be a problem in litigation.

Many attorneys do arguably unethical things, like take equity ownership in a client company in violation of Rule 8 of the Rules of Professional Conduct.

For example, if an attorney has an ownership stake, maybe the attorney-inventor/CEO conversation can be misconstrued as an investor/CEO conversation which would not be privileged. Often, the attorney takes warrants or equity in a startup company as ‘compensation’, which creates an inherent conflict of interest. This conflict can compromise the validity of the patent but also open up other problems during litigation.

Even if the conversation between the inventor and patent attorney is privileged, it is always best to minimize the exposure and never create a problem document in the first place.

Besides, talking through what the claims mean and how they are interpreted is so complex and full of nuance that it is impossible to do through email.

What about comments about the description of the invention?

In general, inventors cannot create problems by commenting about the description, background, figures, or any other part of the patent application. It is always OK for the inventor to comment/correct/add/explain material in the written description. The problems arise when the inventor comments about the claims, because that is the important part during litigation. The description is not nearly as critical.

The truth is that every word in the patent hurts you.

Every word in the patent claims limit the scope of enforcement. Every word in the description/specification are trade secrets you are giving away.

Many inventors (and patent attorneys) are encouraged to “put as much as possible” in the patent specification. This is a myth that was appropriate before 1995 when the patent laws changed. Since then, additional (unclaimed) information in a patent application only serves to create prior art against you.

As a practicing patent attorney, I often will let inventors add more material within reason or adjust the language as they see fit. They may not appreciate that I wrote the language in a specific way or for a specific reason, but in general, comments in the specification are always welcome.

Bottom line: inventors may not appreciate how powerful their seemingly simple comments may be – especially about the claims. Be careful with the comments and have a dialog to make sure you understand why things are written the way they are.