Maximizing Patent Value: A Strategic Approach to Claim Management

In the intricate world of patent filings, understanding how to leverage the structure of your patent application can significantly impact its value. One area that often goes underutilized is the strategic management of claims within an application. As Neil Kardos highlights in this week’s Practical Patents series, a nuanced approach to claim management can not only streamline the patent prosecution process but also ensure clients receive maximum value for their investments.

In the United States, the initial patent application filing fee covers the inclusion of up to 3 independent claims and a total of 20 claims. It’s a common misconception that the quantity of claims within a patent directly correlates with its strength or value. However, the strategic composition and management of these claims can significantly enhance a patent’s effectiveness and its potential to protect innovative technology comprehensively.

During the patent prosecution phase, it’s not uncommon to amend claims to align with the United States Patent and Trademark Office (USPTO) requirements for patentability. This often involves consolidating the concepts of multiple dependent claims into fewer, broader independent claims to facilitate application approval. Yet, this consolidation presents a unique opportunity for strategic claim management.

Neil emphasizes the importance of adding a new dependent claim for every claim that is canceled. This practice ensures that the final patent utilizes the full quota of claims that the filing fee entitles, thus maximizing the patent’s breadth and flexibility without incurring additional costs. It’s a practice that, surprisingly, not all patent practitioners follow, as evidenced by numerous patents issuing with fewer than the allotted 20 claims.

The implications of this strategy extend far beyond mere numerical optimization. Each claim in a patent application can be viewed as a unique tool for protecting different facets of the invention. By ensuring that each patent utilizes its full complement of claims, inventors can secure a more robust and nuanced protection. This not only enhances the patent’s defensive capabilities but also its value in potential licensing discussions or infringement disputes.

Furthermore, this approach demonstrates to clients a meticulous and value-driven management of their intellectual property. In a landscape where every detail counts, the strategic addition and adjustment of claims can significantly differentiate a patent’s quality and its potential for commercial success.

Neil’s insights into claim management offer a valuable perspective for anyone involved in the patent filing process. By understanding the strategic potential of claims adjustment and ensuring that patents utilize their full entitlement, practitioners can deliver enhanced value to their clients, reinforcing the importance of detail-oriented strategies in patent law.

Stay tuned for more insightful tips and tricks from Neil Kardos in our Practical Patents series! Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Elevating Patent Clarity: The Strategic Use of ‘Threshold’ in Patent Drafting

In this edition of the Practical Patents series, we delve into the nuanced use of the term ‘threshold’ in patent language, guided by Neil Kardos. This exploration highlights the importance of precision in patent drafting, a critical skill in the art of protecting intellectual property.

In the meticulous realm of patent drafting, every word counts. The term ‘threshold’ might appear straightforward, yet its application in patents is anything but. Neil explains this with two insightful examples.

1. Achieving Precision Over Vagueness

Clarity is the cornerstone of effective patent drafting. Generic terms like ‘high’ and ‘low’ are laden with ambiguity, often leading to Section 112 rejections. Neil’s advice is to opt for phrases such as ‘satisfies’ or ‘does not satisfy a threshold.’ This method enhances clarity and strengthens the enforceability of the patent.

2. Broadening Patent Scope Through ‘Threshold’

In instances where an inventor provides a specific number or range, the term ‘threshold’ can be used to expand the invention’s scope. By defining these figures as examples of satisfying a ‘threshold,’ a patent can encompass a broader range of applications, enhancing its protective coverage.

Neil emphasizes caution in using ‘threshold.’ He advises against framing claims based solely on a value being ‘greater than’ or ‘less than’ a threshold. Such language can inadvertently open doors for competitive workarounds.

Instead, Neil recommends a more comprehensive approach: asserting that a value ‘satisfies the threshold’ or ‘satisfies a condition.’ This strategy, when combined with a detailed specification, provides a stronger, more defensible patent.

As we conclude this discussion, we’re reminded of the critical role precise language plays in patent law. Neil’s insights into the use of ‘threshold’ underscore the importance of thoughtful and strategic patent drafting.

Stay tuned for more insightful tips and tricks from Neil in our Practical Patents series! Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Enhancing Patent Drafting: The Essential Role of Claim-Figure Mapping

Welcome back to another edition of the Practical Patents series. This week Neil Kardos brings his seasoned perspective to an often-overlooked yet pivotal aspect of drafting: the strategic alignment of claims with figures in patent applications.

Neil emphasizes the importance of creating a mapping between the figures and claims in a patent application. This step, often overlooked, is crucial in ensuring a coherent and comprehensive patent specification. By mapping each figure to the claims they support, patent drafters can establish a clear connection, laying the groundwork for a well-structured specification.

The beauty of this approach lies in its simplicity and efficacy. When you start working on your figures, Neil advises, make it a point to identify which claims each figure relates to. This mapping acts as a guide, ensuring every claim has a corresponding figure where it can be effectively described. If you find a claim that doesn’t neatly align with any of the figures, it’s a clear sign that you need to either introduce a new figure or revise an existing one.

This proactive strategy offers two significant benefits. Firstly, it eliminates the risk of ending up with unsupported claims in your patent application – a common pitfall that can lead to lengthy revisions or, worse, a weakened patent. Secondly, it serves as a remedy for writer’s block. Knowing exactly what to write for each figure can streamline the drafting process, making it more efficient and less daunting.

Neil warns of the pitfalls of neglecting this step. Without pre-mapping your claims to figures, you might find yourself with a draft specification and unsupported claims. At this juncture, the options are limited and unappealing: either retrofit your figures (and consequently, the specification) to accommodate the orphaned claims or force them into sections where they don’t quite belong. Both scenarios lead to a disjointed and potentially weaker patent application.

In summary, Neil’s advice is straightforward yet powerful: map your claims to your figures before diving into the specification. This method not only saves time but also ensures that each element of your patent application is well-supported and clearly articulated.

Stay tuned for more insightful tips and tricks from Neil in our Practical Patents series! Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Elevating Patent Application Efficiency: The Case for a Claims-First Approach

Welcome to another installment of the Practical Patents series, where we delve into the art and science of patent drafting. Today, we’re exploring a provocative statement by Neil Kardos, an experienced patent attorney and advocate for strategic patenting: “If you’re not drafting claims, then figures, then the specification in that order, you’re doing it wrong.”

At first glance, this assertion seems to challenge conventional wisdom. Traditionally, many practitioners draft the figures and specifications first, leaving the claims for last. However, Neil’s approach, honed through experimentation and practice, suggests a radical departure from this norm.

Traditionally, the process begins with drafting detailed figures and a comprehensive specification. The rationale? It’s believed that having a clear visual and descriptive foundation paves the way for more precise claims. However, Neil’s experience tells a different story.

Neil discovered that this traditional method often necessitated significant rework. Terminology used in the specification might not align with the nuanced language of claim drafting. Questions arise: should it be “one or more” or “at least one”? “Multiple” or “a plurality”? Furthermore, naming conventions in the specification might not resonate with the intricate requirements of claim language, leading to a laborious cycle of revision and alignment between the claims, figures, and specification.

Advantages of a Claims-First Approach

  1. Clarity in Novelty and Non-Obviousness: Drafting claims first forces a focus on the invention’s novel aspects. It lays bare the innovative heart of the patent, guiding the subsequent detailing in figures and specifications.
  2. Efficiency in Drafting: By starting with claims, Neil found that subsequent steps became more streamlined. The figures and specification could be tailored to support the claims, reducing the need for iterative revisions.
  3. Strategic Focus: This approach ensures that the specification and figures emphasize the invention’s most crucial aspects, enhancing the patent’s overall strength.

Neil’s method turns traditional patent drafting on its head, emphasizing a strategic, claims-first approach. While it may not be a one-size-fits-all solution, it certainly provides food for thought for anyone involved in the patenting process.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Elevating the Craft of Inventor Interviews

Navigating inventor interviews without a robust disclosure document can be a daunting task for even the most experienced patent professionals. In this week’s Practical Patent series, Neil Kardos shares invaluable tips for transforming these challenges into opportunities for deeper understanding and more comprehensive patent applications.

Tip #1: Record the Call

Recording inventor interviews is a game-changer. It allows patent professionals to immerse themselves in the conversation, fully absorbing the inventor’s insights without the distraction of note-taking. This approach ensures no crucial detail is overlooked, capturing the essence of the invention in its entirety.

Tip #2: Use a Structured Question Checklist

Neil emphasizes the importance of a structured approach, beginning with high-level questions to grasp the overall concept before delving into the finer details. This technique not only clarifies the invention’s framework but also reveals its unique aspects and potential improvements.

The Kardos Questionnaire: Your Blueprint for Success

  1. Identifying the Problem: Understanding the specific issue the invention aims to solve sets the stage for assessing its significance and market relevance.
  2. Summarizing the Solution: This helps in evaluating the innovation’s practicality and its effectiveness in addressing the identified problem.
  3. Exploring Existing Solutions: Knowing what’s already out there highlights the invention’s unique selling points and potential competitive advantages.
  4. Comparing the Invention: This comparison sheds light on why and how the new invention stands out in the existing market landscape.
  5. Uncovering Additional Benefits: Often, inventions have secondary advantages that can broaden their appeal and marketability.
  6. Identifying Novelty: Pinpointing the novel aspects of an invention is crucial for determining its patentability.
  7. Assessing Business Value: Understanding which elements of the invention hold the most commercial potential can guide strategic patent drafting.

For process inventions, a step-by-step walkthrough reveals the intricacies of the method, while mechanical inventions benefit from a detailed analysis of component interrelations. Brainstorming sessions about enhancements and alternatives further refine the invention’s scope and applicability.

Neil’s approach culminates with an open-ended query, inviting any additional insights or overlooked aspects, ensuring a comprehensive understanding of the invention.

By adopting these strategies, patent professionals can adeptly navigate inventor interviews, laying a solid foundation for robust and defensible patent applications.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Decoding the Patent Puzzle: Key Tips to Crystal-Clear Patent Applications

In the intricate and often bewildering terrain of patent applications, achieving clarity is both an art and a science. This is particularly true for software or process-based inventions, where conveying complex ideas in a comprehensible manner is crucial. Neil Kardos offers his expert advice, sharing pivotal strategies to demystify these often perplexing documents. In this blog post, we’ll delve into two of Neil’s key tips, which promise to bring much-needed lucidity to your patent applications.

Tip #1: The Power of Descriptive Naming

Neil’s first tip revolves around the strategic use of descriptive names for devices in patent applications. This approach goes beyond mere labeling; it’s about creating an intuitive understanding of each device’s role. For example, naming a device that handles user verification as an “Authentication Device” instantly reveals its function. This practice ensures that every mention of the device within the document not only identifies it but also reminds the reader of its purpose, thus maintaining a clear focus on the invention’s core functionalities.

Tip #2: Artful Separation of Function and Form

In his second tip, Neil highlights the importance of distinguishing between what devices do and what they are. He recommends that the narrative in the “Invention Detail Figures” should concentrate on the devices’ roles in the invention’s process. For example, describing a user device transmitting credentials to an authentication device should be about this process, not about the possible physical forms of the user device. The comprehensive description of the devices’ physical forms and variations should be allocated to the “Device Environment Figure.” This methodical separation ensures the patent application remains streamlined and focused, facilitating a smoother reading experience.

By implementing these tips, inventors and patent drafters can significantly enhance the readability and clarity of their patent applications. Neil’s guidance is not just about simplifying content; it’s about structuring it in a way that guides the reader through the invention’s narrative with ease and understanding.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Mastering the Art of Clarity in Patent Applications

The world of patent applications is intricate and demanding. Among the numerous challenges faced by inventors and patent practitioners, one that stands paramount is the art of drafting a clear and engaging patent specification. Neil Kardos offers profound insights into enhancing the readability of patent applications.

The heart of Neil’s advice lies in the organization of the patent specification. The traditional approach of hopping between figures can be disorienting, leading to confusion. Neil advocates for a more linear, structured approach. This entails starting with an introductory paragraph for each figure, detailing its contents thoroughly, and concluding with a summary. Such an approach doesn’t just enhance readability; it builds a narrative, making the invention’s journey through its various stages more comprehensible and compelling.

Neil delves into two scenarios frequently encountered in patent drafting:

  1. Sequential Storytelling with Figures: Often, a series of figures (e.g., Figs. 1a to 1c) is used to unfold the invention step-by-step. Neil suggests employing a single introductory and concluding paragraph for the entire series. This technique ensures a seamless narrative flow, making the progression of the invention easier to follow and understand.
  2. Balancing Overview and Detail: When one figure presents an overarching view (e.g., Fig. 1) and another dives into granular details (e.g., Fig. 2), Neil recommends a delicate balancing act. Mention Fig. 2 while discussing Fig. 1, but save the in-depth discussion for later. This approach keeps the reader anchored in the broader context before delving into specifics, thereby maintaining engagement and understanding.

Neil’s methodology extends beyond mere structural organization. It embraces the art of storytelling within the technical confines of patent law. By treating each figure not just as a visual representation but as a chapter in the story of the invention, the drafter can create a more immersive and understandable narrative. This approach resonates with examiners and potential licensees, making the invention not just a list of technical features but a compelling innovation journey.

In the realm of patents, clarity is not just about compliance; it’s about captivating the reader, be it an examiner, a judge, or a potential investor. By adopting these strategies, patent practitioners can transform their applications from mere technical documents to engaging narratives that effectively communicate the essence of their inventions.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Crafting the Narrative in Patent Applications

In the realm of patent applications, the art of storytelling is often overshadowed by the complexity of technical details. However, Neil Kardos brings a refreshing approach to structuring patent applications, emphasizing not just the technicalities but the story of the invention itself. His method improves readability and enhances the experience for inventors and in-house counsel alike.

1. Setting the Stage with Background
Neil begins by advising the inclusion of a background section. This part introduces the technology behind the invention. Depending on the familiarity and complexity of the technology, this section can vary in length. For well-known concepts, a few sentences suffice, but for more intricate technologies, a detailed exposition might be necessary.

2. Identifying the Technical Problem
Following the background, Neil emphasizes the importance of clearly outlining the technical problem addressed by the invention. This step is crucial as it sets the stage for the solution and helps the reader understand the necessity of the invention.

3. Introducing the Technical Solution
Next, a high-level explanation of the technical solution is presented. This part showcases how the invention solves the identified problem. It’s a strategic move to keep this explanation at a high level, ensuring clarity and engagement.

4. Highlighting the Technical Benefits
Neil suggests elucidating the technical benefits of the invention. This section reinforces the value of the invention and its contribution to the field.

5. Diving into the Details
The fifth part of the structure delves into the specifics of the invention, including various options, alternatives, and detailed benefits. This comprehensive exploration allows for a deeper understanding of the invention’s potential.

6. Standardized Figures and Descriptions
Finally, standardized figures and descriptive language, particularly important for hardware supporting process-based inventions, are placed towards the end of the application. Neil’s rationale for this arrangement is to captivate the reader’s interest with the most significant elements upfront, avoiding boredom or confusion.

Neil’s recommended structure is not just about organizing content; it’s about crafting a narrative that makes patent applications more accessible and engaging. By following this structure, patent professionals can effectively communicate the essence of an invention, making the complex world of patents a bit more approachable and relatable.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Navigating the Maze of Machine Learning Patents: Strategies for Steering Clear of Obviousness

In the ever-evolving domain of machine learning, securing patents for novel inventions is a complex challenge. Neil Kardos shares his expert strategies in this week’s Practical Patents series. His focus is on the intricacies of drafting machine learning patent applications that stand out, avoiding the common trap of obviousness.

Neil stresses the significance of meticulously detailing machine learning patents. Building on the insights shared in last week’s blog post, which highlighted the importance of delineating the inputs to the model, the outputs generated, and the resultant actions, he now introduces three advanced strategies to further distance machine learning models from the risk of being deemed obvious.

Strategy 1: Novel Inputs

Neil’s first strategy centers on the unique choice of inputs in machine learning models. He advocates for leveraging unconventional inputs with significant predictive power to strengthen the non-obviousness of a patent application. For example, he cites the intriguing correlation between an individual’s time spent in a car and their smartphone purchasing preferences as a potential differentiator in a patent application.

Strategy 2: Diverse Outputs and Actions

The second strategy Neil suggests relates to the outputs of the models and the corresponding actions. He points out that beyond the typical binary actions, incorporating a range of responses based on different levels of probability can impart a unique edge to a patent. This could involve varying marketing tactics depending on the predicted likelihood of a customer making a purchase.

Strategy 3: Continual Model Refinement

Neil’s final strategy emphasizes the ongoing improvement and adaptation of machine learning models, especially through feedback mechanisms for re-training. Such adaptive features are often viewed positively by patent examiners and can be crucial in either the independent or dependent claims of a patent application.

Neil offers these strategies as a guide for those seeking to navigate the intricate world of machine learning patents. His insights shed light on effective approaches to elevate machine learning patent applications above the standard threshold of obviousness.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Decoding the Art of Machine Learning Patents

In the dynamic and ever-changing world of machine learning (ML), creating a standout patent application is akin to solving a complex puzzle. It’s a landscape where innovation meets the challenge of differentiation. Neil Kardos offers insightful strategies to navigate this complexity, ensuring your ML patents are not just innovative but distinctively non-obvious.

The crux of patenting ML innovations lies in surpassing the “non-obviousness” threshold. This is where Neil’s expertise becomes invaluable, guiding inventors to develop patents that truly stand apart.

Strategy 1: Capitalizing on Unique Inputs

Neil highlights the significance of the inputs used in ML models. The key is in leveraging unconventional inputs that provide predictive insights. Imagine an ML model predicting consumer behavior based on seemingly unrelated data, like time spent in a car. These unique inputs can dramatically strengthen the non-obviousness of a patent application.

Strategy 2: Leveraging Outputs and Actions

The second strategy delves into the outputs of ML models and the subsequent actions they trigger. Neil suggests focusing on how these outputs, often probabilistic, can dictate varied actions at different confidence levels. This nuanced approach adds a layer of sophistication to your patent, exemplified by a navigation system that adjusts routes based on the ML model’s confidence levels.

Incorporating these strategies into your patent claims is essential. Neil advises that if these innovative approaches are central to your invention, they should be included in independent claims. However, if they are supplementary, consider adding them to dependent claims or the specification. This method ensures robustness during the patent prosecution process, especially against potential prior art challenges.

In the intricate dance of ML patenting, it’s the nuanced details and strategic claim drafting that make all the difference. With Neil’s guidance, your ML inventions can transcend the ordinary, securing a place in the ever-growing patent landscape.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Efficient Patent Application Drafting: Minimizing Rework in Inventor Interviews

In the world of patent application drafting, efficiency is key. Neil Kardos offers valuable insights into making the process more streamlined, especially in handling inventor interviews. A common trap many patent practitioners fall into is the inadvertent engagement in rework, particularly in the way inventor interviews are conducted. Transcribing or listening to the entire recording of these interviews, as it turns out, is a significant time sink.

Recording inventor interviews is useful as a backup, but relying on them extensively for information can lead to inefficiency. Instead, Neil advocates for effective note-taking as the cornerstone of efficiency. This involves preparing questions in advance, written in blue ink, and noting down answers in red during the interview. This method is flexible, working well with both traditional and digital note-taking methods.

In this process, strategic note-taking is key. It’s important to avoid noting down information that is already known or included in the invention disclosure form (IDF). The focus should be on clarifying ambiguities and jotting down new insights. If you fall behind in note-taking, marking the time elapsed in the interview can help you quickly locate the needed section later, should you need to revisit the recording.

Modern technology, such as screen sharing, can further enhance the efficiency of reviewing recordings, allowing for quick navigation to relevant sections. A critical aspect of this process is setting aside time for a post-interview debrief. This could range from determining focus areas for claims to drafting the claims and figures. Neil describes this method as “frontloading,” a highly effective strategy that he discusses in more detail in another presentation.

Neil’s advice highlights subtle but impactful methods for refining workflow in patent application drafting. By adopting these strategies in inventor interviews, patent practitioners can transform a routine task into a significant efficiency booster.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Revolutionizing Patent Applications: The Case for Clarity in Language

In the intricate world of patent law, the clarity of legal documents is not just a nicety but a necessity. Neil Kardos, a vocal advocate for more readable patent applications, recently highlighted an issue that’s often overlooked yet crucial. Patent applications, by their nature, are complex. They are technical documents, intricately detailing how new technologies function. However, Neil points out an additional layer of complexity that stems not from the content but from the style of writing.

Patent professionals are experts in their fields, with rich backgrounds in science, math, and engineering. However, Neil observes that this technical focus often comes at the expense of writing skills. The result? Patent applications that are not just technically dense but also linguistically challenging. Adding to this complexity is the traditional use of legal jargon, or legalese, which can make documents even more daunting.

Neil suggests a simple yet effective change: replacing “said” element with “the” element in patent claims. While this might seem minor, the impact on readability is significant. He draws on a Patently-O article, which indicates that in the 1970s and 1980s, about 90% of patent applications used “said”. Today, this usage has reduced to around 20%. Neil argues that even this is too high. By embracing simpler language, the patent community can make these vital documents more approachable and understandable.

What sets Neil apart is his approach to this issue. He doesn’t just propose a change; he invites a discussion. This open invitation is more than a call for change; it’s a call for a community-wide reflection on how the patent world communicates.

Neil’s advocacy for clearer writing in patent applications goes beyond merely suggesting a change; he fosters a dialogue towards a future where legal documents are not barriers but bridges to understanding. By adopting simpler language, the patent community can ensure that these crucial documents are not only legally sound but also broadly accessible.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

The Art of Precision: Enhancing Patent Illustrations with a Touch of Expertise

Navigating the patent process is akin to crafting a masterpiece—each line, shade, and angle contributes to the final depiction of innovation. In this intricate dance, the initial sketches set the stage. Neil Kardos, like a skilled artist, starts with strokes of inspiration, transforming the abstract into tangible hand-drawn figures.

This is where the journey from concept to concrete begins. It’s a pivotal transformation, facilitated by the adept hands of a Visio specialist at Harrity. With an arsenal of tailored templates and precision stencils, these initial sketches are elevated to the standards of professional patent drawings—often within the span of a day.

For many practitioners, however, such in-house luxuries may be a distant dream. Neil advises those in the wider legal landscape to seek out and foster relationships with professional drafters or specialized firms. Particularly for elaborate mechanical applications, where the minutiae matter, these partnerships can be invaluable.

Neil’s strategic advice extends beyond the logistics of drafting—it’s a philosophy of time management and focus. For the modern attorney, particularly in the world of fixed fees, the importance of honing in on crafting claims and the specification is paramount. Neil shares some of his personal tips to cut down on the drafting drudgery: avoid redrawing components that can be pulled from an IDF or another application—simply annotate “copy from slide 7 of the IDF” as a directive. And when it comes to modifications, why not start with a print-out of an existing drawing and manually add your edits?

At the heart of Neil’s methodology is a balance between efficiency and quality. By delegating the drawing process, attorneys at Harrity & Harrity are empowered to dedicate their expertise to the core elements of patent applications. This not only enhances the firm’s productivity but also upholds the high-quality standard that clients have come to expect.

What inventive methods do you employ in your practice to ensure your patent drawings are the epitome of efficiency and precision? At Harrity & Harrity, we’re committed to learning and sharing insights that propel us all towards excellence in the ever-evolving patent landscape.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Streamlining Inventor Approvals in Patent Drafting

As patent attorneys, one of our principal objectives is to draft applications that not only meet legal standards but also receive the nod of approval from the inventors we represent. It’s a delicate balance of interpreting technical ingenuity and presenting it through the stringent lens of patent law. Join us this week in our Practical Patents series, as Neil Kardos offers seasoned advice on how to navigate this process effectively, ensuring that when inventors review our applications, their most frequent response is an affirming “looks good.”

The process begins with the inventor interview—a critical juncture where the foundation for a robust application is laid. Here, we delve into the nuances of the main embodiment of the invention. Yet, it’s not just about the present innovation; it’s about potential future iterations as well. This is where the art of questioning becomes paramount.

Neil advises that to unlock the full narrative of an invention, one must go beyond the surface. It starts with identifying the novel aspects of the technology at hand. The question “What are some other ways this could be done?” not only helps in outlining potential alternatives but also safeguards against future design-around efforts. By brainstorming these alternatives preemptively and discussing them with inventors, we can stimulate a more dynamic and comprehensive exploration of the invention’s scope.

The inquiry doesn’t stop at what exists; it extends to what could follow. Asking inventors to envision further improvements or next steps in their innovation journey can reveal valuable insights into the invention’s future applications or enhancements. This foresight is crucial in crafting a patent application that is not only relevant today but will stand the test of time.

Lastly, a thorough wrap-up question such as “Is there anything we’ve overlooked?” ensures that all relevant details have been captured. It’s an essential part of the interview that can uncover overlooked aspects, leading to a more complete and robust application.

Setting expectations with the inventor is equally vital. The level of detail and focus in the patent application often correlates with the inventor’s experience with the patent process. For newcomers, it’s beneficial to outline what the patent application will include and why certain aspects will be highlighted over others. This clarifies the document’s focus on novel elements and prepares the inventor for the application’s format and content.

By adhering to these strategies, Neil asserts that patent attorneys can significantly reduce the need for subsequent revisions and increase the likelihood of obtaining that initial “looks good” from inventors. This approach not only streamlines the review process but also fosters a collaborative relationship with the inventor, ultimately leading to higher-quality patent applications.

The key is about understanding the inventor’s vision and ensuring that the patent application accurately and effectively communicates that vision within the legal framework. By incorporating these practices, patent attorneys can enhance their drafting process, resulting in greater satisfaction for both the inventors and the legal professionals tasked with protecting their creations.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Understanding the Sequence: Navigating the Nuances of “First” and “Second” in Patent Claims

In the meticulous practice of patent application drafting, the choice of words can be as crucial as the invention itself. Neil Kardos explores the subtleties of using sequential terms in the latest edition of the Practical Patents Series. Clarity and precision in claim language are the cornerstones of a robust patent application, a principle that Neil emphasizes in his discourse.

The common practice of denoting elements or steps as “first” and “second” serves a fundamental role in distinguishing components within patent claims. However, Neil cautions that these seemingly straightforward terms can be a double-edged sword. He presents a scenario that many practitioners encounter: defining a sequence within an invention. The term “first” might intuitively imply the beginning of a sequence, but as Neil elucidates, its interpretation in patent law can be broader.

Neil urges that when the order is pivotal to an invention’s functionality, the terms “first” and “second” should be used with discernment. For instance, if the intention is to specify the very start of a sequence, more explicit language might be warranted, such as “an initial time period” or “the earliest-occurring time period.” These alternatives leave no room for ambiguity and ensure that the claims are understood as intended.

In his practical guidance, Neil also highlights the importance of aligning the specification and drawings with the claims. This harmony across the patent application is vital for delineating the exact meaning of sequence terms, especially when dealing with inventions where timing is key.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Navigating Patent Prosecution: Understanding Your Examiner for Better Outcomes

In the world of patent prosecution, understanding the intricacies of the process can be the key to success. Neil Kardos shares some invaluable insights into how to achieve better outcomes during patent prosecution. With a background as a former patent examiner at the USPTO, Neil brings a unique perspective that can significantly impact your patent application journey.

Neil’s journey from a patent examiner to his current role at Harrity has given him a unique perspective on the patent world, and he’s here to shed light on a crucial aspect of the process – working effectively with examiners.

When Neil embarked on his career as a patent examiner, he encountered the familiar hesitation that often plagues newcomers in the field when it comes to allowing patent applications. This sentiment was widespread among his peers, and the challenges were amplified by his assignment to a business methods art unit. Neil’s early experiences reflect the reality of the patent landscape, as his examiner score in PatentPrufer started at a modest 56 out of 100.

Experience Breeds Confidence

Time and experience proved to be Neil’s greatest allies. With the accumulation of years spent in patent examination, he gradually became more comfortable with granting patents and, equally crucial, collaborating effectively with applicants to fine-tune claims for a higher likelihood of success. Neil’s journey underlines a universal truth in patent prosecution: grasping the unique dynamics of your assigned examiner is a cornerstone of success.

In the world of patent examination, each examiner brings their distinct perspective, expertise, and approach to the table. Acknowledging and embracing this individuality is pivotal in navigating the intricacies of patent prosecution. At Harrity & Harrity, we recognize this fundamental truth.

Harnessing the Power of Examiner Analytics

Within our firm, we harness the potential of examiner analytics to make well-informed decisions during the prosecution process. A critical judgment involves evaluating whether to request the presence of a primary examiner during inventor interviews. This decision hinges on the experience level of the examiner assigned to your application.

Moreover, you have the opportunity to request a specific primary examiner based on their performance score. This score offers a rough indication of their likelihood to allow your patent application. It’s a strategic move that can significantly impact your prosecution strategy.

In closing, Neil’s remarkable journey underscores a profound truth: the art of patent prosecution is as diverse as the examiners themselves. By delving into the intricacies of each examiner’s approach and leveraging the power of examiner analytics, you hold the key to unlocking a world of possibilities in the ever-evolving landscape of patents. As you embark on your own patent prosecution journey, remember that knowledge truly is power, and harnessing it can lead to transformative success.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Providing Context in Patent Applications: A Strategic Approach to Storytelling and Claiming

Patent professionals understand that the choice of language in patent applications can have far-reaching implications. This week, Neil Kardos explains how one such term fraught with peril is “background.” The concerns around this terminology are twofold:

  1. Admitted Prior Art: Any information presented in a section labeled as “background” may be considered as admitted prior art, which can negatively influence the patent examination process.
  2. Obviousness Rejection: Describing the problem solved by the invention under “background” could provide the examiner with a basis to argue that the solution is obvious, thereby facilitating an obviousness rejection.

Alternatives to ‘Background’

So, how can one maneuver around these pitfalls? Neil explains that there are two strategies that can be employed:

Omission or Renaming

The first strategy is to either omit a section explicitly called “background” or to rename it to something like “Introduction” or “Technical Field.” By doing so, you reduce the risk of the examiner interpreting this section as an admission of prior art.

Contextual Placement

The second strategy involves placing the context or “background” information within the “Detailed Description” section. Here, you can set the stage for understanding the technical problem without overtly admitting it as prior art.

Tailoring Context to the Nature of the Invention

Different types of inventions require different levels of contextual detail:

  • Technical Standards-Related Inventions: For an invention that closely aligns with technical standards, it’s crucial to clarify any standard-specific terminology. Failure to do so could lead to an examiner or court misconstruing your patent claims.
  • Consumer-Friendly Inventions: For inventions that are easier to comprehend, such as extending a phone’s battery life, a shorter, less technical explanation would suffice.

Addressing Section 101 Rejections

For inventions that stand a high chance of facing Section 101 rejections, it’s beneficial to frame the invention as a technical solution to a technical problem. This could make it easier to argue against any 101-based rejections.

In conclusion, Neil explains that choosing the right language and placing it appropriately can make a significant difference in the outcome of a patent application. By considering the nature of your invention and the potential pitfalls surrounding the term “background,” you can craft a more compelling and robust patent application. This strategic approach not only improves the chances of success at the patent office but also sets a strong foundation for any subsequent legal evaluations.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

The Power of Checklists in Patent Application Drafting

When it comes to the intricate process of drafting patent applications, even seasoned professionals can find themselves submerged in a maze of technicalities, client-specific requirements, and meticulous details. Neil Kardos highlights a simple yet effective strategy for navigating this complex terrain: the use of a checklist. This blog post delves into how a well-crafted checklist can not only improve the quality of your patent applications but also bring a new level of efficiency to your work.

The Quality Factor: More Than Just a Safety Net

First and foremost, let’s talk about quality. It may seem like a given, but when you’re working on something as complex as a patent application, it’s surprisingly easy to forget the basics. Running a spell check or utilizing patent proofreading tools might seem rudimentary, but these are the steps that ensure the polished finish of a professional application. Here, a checklist acts as more than just a safety net; it becomes an essential quality control measure. By ticking off these checks as you go, you make sure that no minor or major step gets overlooked, thereby elevating the quality of your entire application.

Navigating Client Preferences: A Customized Approach

In a professional landscape where one size rarely fits all, it’s imperative to cater to the unique needs of each client. Whether it’s about the sequence in which they want to review the application—be it claims, figures, or the entire draft—or the mode by which they prefer to receive submissions, client preferences can vary widely. This is where a customized checklist shines. Not only does it serve as a reminder of the individual needs of each client, but it also acts as a flexible tool that can be adapted to different processes, ensuring you hit the mark every time.

Drafting: An Art and a Science

When it comes to the art and science of drafting a patent application, most of us don’t approach it in a linear fashion. Neil, for instance, prefers to start with the context for the invention and the details of the invention itself. This initial focus allows him to fine-tune the claims, which are the backbone of any patent application. Once the claims are set, he then circles back to complete the summary, flow chart descriptions, and other interconnected sections. Here, the checklist serves as a tactical guide, ensuring that not only do all these pieces get the attention they deserve, but they also follow an optimized sequence for maximum efficiency.

At its core, a checklist is more than just a list of tasks; it’s a strategic tool that enables better planning, higher quality, and efficient execution in the patent application drafting process. Neil recommends creating master checklists that can be customized according to the diverse needs of each client. This approach not only fosters quality and efficiency but also brings a newfound level of clarity to your drafting process.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

The Art of Word Selection in Patent Application Drafting

Drafting a patent application is an art form that requires meticulous attention to detail, especially when it comes to language use. Neil Kardos accentuates this point by highlighting the potential pitfalls of using terms like “first” and “second” in patent claims. Such terms, while seemingly straightforward, can introduce ambiguity that may have far-reaching legal implications.

Neil presents a compelling example to illustrate the complexities involved. Imagine a claim that involves multiple signals, say a “first signal” that generates a “second signal.” If additional claims reference other signals, labeling them as “third,” “fourth,” etc., could create significant confusion. This is not just a theoretical concern; such ambiguity could actually compromise the enforceability or scope of the patent claim.

Strategic Approaches to Resolve the Issue

  1. Specific Labeling: One way to avoid confusion is to adopt specific labels for these signals. However, care must be taken to ensure these labels do not unintentionally limit the claim’s scope.
  2. Dependent Claim Labeling: Another approach Neil recommends is to only use “first” and “second” in the independent claim. This allows for the use of distinct labels for signals in dependent claims, minimizing the risk of confusion.

Considerations for Long-term Strategy

As patent attorneys, agents, and support staff, it’s crucial for us to think beyond the immediate challenges of patent drafting. For instance, how can we adopt an analytics-driven approach to identify common pitfalls in patent application drafting? How could automation aid in standardizing terminology and reducing errors?

Neil’s advice is not just a set of drafting tips but also a call for critical thinking in the patent field. His insights remind us that every word in a patent application carries weight and could have long-term consequences for innovation in the computer, electrical, and mechanical fields. As we continue our pursuit of innovation and quality in patent law, taking heed of such expert advice is indispensable.

Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Mastering the Art of the Inventor Interview: Ensuring Confidence While Asking the Right Questions

Greetings fellow patent enthusiasts! An inventor interview is not just an information-gathering session; it’s an opportunity to build rapport and trust between the inventor and the patent professional. Join us this week as Neil Kardos explains how the nuances of these interactions can significantly impact the inventor’s confidence in your capabilities to represent their interests adequately.

Pre-Interview Research: A Non-Negotiable Step

Before the interview, always take the time to research any unfamiliar concepts in the inventor’s documentation. This not only prepares you for the discussion but also avoids asking questions that could potentially undermine the inventor’s confidence in your expertise. A simple web search for unknown terms or concepts is often enough to provide the necessary context.

Tackling the Unknown: Phrasing is Key

There will inevitably be times when prior research doesn’t yield clear explanations for certain terms or technologies. In such instances, how you pose your questions can make all the difference. Here are some strategies:

1. Acknowledge Your Effort

Example: “I searched the web for XYZ, but I couldn’t find a really good explanation. Can you explain it to me?” This approach shows that you have made an effort to understand but have hit a roadblock, inviting the inventor to fill in the gaps.

2. Draw Parallels with Familiar Concepts

Example: “I’m familiar with how ABC works, but I don’t understand XYZ. Can you explain it to me?” This method acknowledges your expertise in related areas and humbly asks for clarification on the specific topic at hand.

3. Navigate Company-Specific Jargon

Example: “I saw that you’ve used the term XYZ in your documentation, and I couldn’t find a good explanation of what that is. Can you explain that to me, or is there another term for this that I could look up?” When dealing with internal jargon, this approach shows that you are proactive and willing to learn.

The inventor interview is a crucial aspect of patent law practice, requiring a blend of expertise, humility, and strategic questioning. A well-prepared and conscientiously executed interview not only yields the information necessary for drafting a robust patent application but also establishes a positive working relationship with the inventor.

So the next time you’re preparing for an inventor interview, remember these tips. A little preparation and strategic questioning can go a long way in ensuring a productive and confidence-inspiring conversation. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

A Strategic Approach to Preparing Patent Claims for Multiple Jurisdictions

Welcome back, fellow patent enthusiasts! In the dynamic world of patents, one size does not fit all, especially when considering international filings. As a seasoned patent professional, Neil Kardos delves into strategic tips tailored to the unique requirements of several major jurisdictions.

1. Understanding U.S. Application Trends: For U.S. applications, it’s customary to file with 3 independent claims and 20 total claims, maximizing the filing fee benefit without incurring additional charges for excess claims. As an illustration from software patent applications, Neil frequently files:

  • 7 method claims
  • 7 device claims
  • 6 computer-readable medium claims

2. European Patent Office (EPO) Strategies: The EPO permits 15 claims without additional fees. A savvy approach Neil adopts is leveraging method claims to craft a nuanced computer-readable medium claim. This involves:

  • Using the 7 method and 7 device claims from the U.S. application.
  • Adding a unique 15th claim: “A computer program product that, when executed by a processor, causes the processor to perform the method of any of claims 1 to 7.”

Further, utilizing multiple dependent claims, which the EPO allows, can be beneficial.

3. Navigating Claim Filings in China and India: Both China and India allow a filing of up to 10 claims without surplus fees. Given that each additional claim costs under $25, Neil suggests submitting between 10 to 20 claims from the U.S. application. Filing all 20 claims in these jurisdictions would cost approximately $250, a stark contrast to the EPO’s fee structure.

4. The Canadian Perspective: Canada presents a unique scenario, as there aren’t excess claim fees. Neil’s strategy here often involves deferring examination until the entire U.S. patent family (inclusive of parent applications and continuations) is finalized. Subsequently, a Patent Prosecution Highway request is filed with an amendment encompassing all claims from the sanctioned U.S. applications.


In conclusion, effectively preparing patent claims for international jurisdictions demands both a deep understanding of regional nuances and a strategic mindset. Neil’s insights, as presented, provide a robust foundation for such endeavors.

Thank you for reading, we invite you to share your experiences and tips regarding claim preparation in these or other jurisdictions. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Enhancing Claim Readability for a Competitive Edge

Greetings once again, esteemed patent aficionados! We’re back this week with Neil Kardos’ Practical Patent tips, as he shares a valuable tip that can not only enhance the readability of your patent claims but might also bestow a subtle psychological advantage when liaising with a patent examiner.

In the complex field of patent drafting, clarity and precision are paramount. Neil shares a valuable insight into refining the presentation of patent claims. The objective? To make them more reader-friendly and potentially create a positive impression on patent examiners.

Typically, claims are drafted using sizable blocks of text for each step or component. These blocks are neatly separated by semicolons and start on fresh lines with an indent. But what happens when a single step or component spans over four lines or more?

Neil suggests, “If you encounter a step comprising two lines, followed by a ‘wherein’ clause also spanning two lines, it can be cumbersome for readers. Instead of presenting it as a continuous four-line chunk, break it up.” He recommends placing a comma at the end of the first two lines, then initiating the ‘wherein’ clause on a new indented line. This technique breaks the invention down into bite-sized, easily digestible segments.

Possible Psychological Advantage with Examiners

Another potential upside to this approach is its optical effect. The same word count, when spaced out, consumes more lines on paper, possibly giving the impression of a more detailed claim. Kardos, drawing from his experience as a former examiner, expresses skepticism about the weightage of this theory. He says, “In my examiner days, I was mostly hunting for the claimed invention, irrespective of its presentation.” However, if an examiner vacillates about an allowance, and this presentation nudges them towards granting it, then the strategy surely holds merit.

Enhanced Readability Equals Improved Quality

Neil emphasizes that the chief advantage of this technique lies in its improved readability. An easily comprehensible claim not only facilitates the examiner’s job but also ensures that reviewers and inventors can accurately gauge if the invention has been captured aptly.

He concludes, “In the intricate realm of patents, clarity is a boon. By adopting this simple strategy, patent attorneys can significantly enhance the quality and perception of their claims. I genuinely hope practitioners find this tip beneficial.”

Thank you for reading, and we invite you to explore more insights and strategies in the patent field on our Practical Patents blog series. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Honing Business Methods Patent Applications: A Shift Towards Technicality

Welcome back, fellow patent enthusiasts! We’re back this week with Neil Kardos’ Practical Patent tips, as he draws on his experience as a former business methods patent examiner and his extensive work in the field, to offer strategic insights for navigating the complex terrain of business methods patent applications. Neil emphasizes the imperative of transitioning the focus from primarily business methods to technical aspects.

Understanding the Shift

Business methods often grapple with a common conundrum: they are inherently business-centric, which makes them particularly susceptible to invalidity challenges. The magic lies in reframing the invention’s narrative. Neil’s approach hinges on the following:

  • Engaging in Inventor Conversations: Start by discerning the technical elements during initial discussions with inventors. This sets the groundwork for refocusing the application.
  • Identifying Key Technical Aspects: Using an example of a system harnessing transaction data to inform users about sales in nearby stores, Kardos underscores the value of delving into the ‘how’ of the invention. This includes understanding:
    1. The mechanisms behind determining a user’s shopping preferences.
    2. The methodologies for identifying stores with ongoing sales.
    3. The intricacies of location-based messaging.

By interrogating these technical dimensions, the narrative can shift away from targeted advertising to spotlight the innovation’s technical prowess.

Deep Dive into Technicality

To reimagine a business methods patent application with a technical lens, consider the following questions:

  1. Data Processing & Analysis: How is the user data processed? Are there any transformative elements involved? Does the system employ machine learning techniques?
  2. Sales Data Acquisition: Does the system utilize web scraping? Is there an element of natural language processing involved? How are emails analyzed for sales information?
  3. Messaging Mechanism: How is location-based messaging achieved? How does the system discern store locations? What decision-making algorithms are in place for timely and relevant messaging?

Addressing these inquiries aids in capturing the essence of the invention’s technical novelty, presenting it in a light more favorable for patent allowance.

Conclusion

The patent application domain is rife with challenges, especially for business methods. However, with a tactful shift towards highlighting technical components, these hurdles can be effectively navigated. Neil Kardos’s expertise and willingness to share knowledge offer a beacon of hope for those navigating this intricate field.

Thank you for reading, and we invite you to explore more insights and strategies in the patent field on our Practical Patents blog series. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Crafting Single-Party Infringement Claims: A Strategic Approach

Hello there, fellow patent enthusiasts! We’re back this week with Neil Kardos’ Practical Patent tips, as he explains how drafting claims capable of being infringed by a single party (as opposed to multi-party infringement) enhances the enforceability of your patent rights. Neil shares a pattern that he has found immensely useful in drafting such claims, particularly for process-based inventions. The pattern revolves around three key steps: Reception, Determination, and Transmission.

1. Identify the Inventive Device: “Where is this Invention Happening?”

When working with a process-based invention, it is essential to pinpoint the inventive device. This could be a server on the back end, a client device on the front end, or a router. Understanding the core hardware is the foundation for creating robust and clear claims.

2. Determine the Trigger: “What Triggers the Inventive Device to Perform the Invention?”

The inventive process often begins with a reception or “receive” step. Knowing what triggers the inventive device allows you to craft the initial steps of your claim more accurately.

3. The Novelty Lies in Determination: “What Does the Inventive Device Do With the Information?”

This stage often includes one or more “determine” steps and usually houses the novel aspects of the invention. The language here might vary, but focusing on what the inventive device does with the received information is pivotal.

4. Conclude with Transmission: “What’s the Result?”

Often, the inventive process concludes with a “transmit” step. Identifying what the inventive device does with the determination helps in framing the claim in a manner that aligns with single-party infringement.

Neil Kardos’ pattern of (1) Reception, (2) Determination, and (3) Transmission serves as an efficient framework for drafting patent applications for process-based inventions. While not universally applicable, it offers a cohesive approach to ensure claims are infringeable by a single device, and hence, a single party that controls that device.

Understanding the nature of the inventive device, the sequence of steps involved in the invention, and the novelty can streamline the claim-drafting process. This methodology not only simplifies the legal proceedings for clients but fosters innovation by providing a clear pathway to protect new inventions.

Thank you for reading, and we invite you to explore more insights and strategies in the patent field on our Practical Patents blog. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Handling Different Types of Invention Disclosure Forms (IDFs): A Practical Guide with Neil Kardos

Greetings, fellow patent enthusiasts! We’re back this week with Neil Kardos as he shares invaluable insights into handling different types of IDFs in preparation for inventor interviews.

Understanding the “Good IDF”

According to Neil, IDFs commonly fall into three categories: the “good IDF,” the “sparse IDF,” and the “huge IDF.” In this particular discussion, he zeroes in on the “good IDF,” which many practitioners would consider the dream scenario.

With a “good IDF”, you find that the materials clearly elucidate the workings of the invention. You read through them, and you have a lucid grasp of the concept. There might be minor details that elude you, but for the most part, you understand it.

But here lies the pitfall.

The Trap of the “Good IDF”

If you’re operating in a fixed-fee world, it may be tempting to expedite the inventor interview. Neil narrates a familiar sentiment: “Thank you so much inventor. The materials you shared are fantastic, and I understand your invention. I just have two quick questions, and then we can both be on our way.”

This approach, Neil warns, is a grave mistake for two reasons:

  1. The Human Connection: You might perceive yourself to be in the patent business, but, as Neil underscores, you’re really in the people business. This interview might be the inventor’s only chance to thoroughly articulate their invention to someone. Rushing through the process might lead the inventor to think that you’re not giving their project the attention it deserves.
  2. Missing Out on Insights: Without delving into the invention, you may overlook misunderstandings or additional features the inventor wants to emphasize. Moreover, rushing the interview may rob you of the opportunity to brainstorm on the call, possibly missing key aspects that could enhance the patent’s value.

Conclusion: Embrace the Process

Neil’s parting wisdom is this: don’t succumb to the allure of the “good IDF” by thinking that you can bypass the inventor interview. You might save some time, but the loss in understanding and human connection will cost you in the long run.

His advice is not merely about patent law but transcends into the realm of human relations and communication. Thanks for watching, and we hope this guidance from Neil helps those venturing into the complex and nuanced world of IDFs. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Essential Tips for Conducting Inventor Interviews with Minimal Documentation

Greetings, fellow patent enthusiasts! We’re back this week with valuable insight from Neil Kardos as he unveils a strategic approach for acquiring comprehensive information about an invention when faced with limited initial documentation. In scenarios where only the title of the invention or a few descriptive sentences are available, this guide can be instrumental.

Understanding the Challenge

Sometimes, patent professionals receive scant details about an invention before an inventor interview. Reaching out to inventors for more information might be an option, but not always feasible. In such a scenario, Neil has perfected an approach that’s applicable to virtually any technology.

A Generic Outline of Questions

Years ago, Neil created a generic outline of questions, adaptable to different technological contexts. When dealing with a sparse disclosure document, this outline can be supplemented with specific inquiries about the invention.

High-Level Orientation

The outline begins with broad questions to set the context:

  1. What is the background and context for this invention?
  2. What is the problem being addressed?
  3. What are the advantages of this invention over alternatives?
  4. What are the novel elements of the invention?
  5. How does the invention align with business strategy?

Detail-Oriented Approach

After establishing the context, Neil delves into the intricacies. His inquiry typically focuses on two general questions:

  1. How does the invention function step by step? This question seeks to uncover the mechanisms, alternatives, and possibly the independent claims and flowcharts of the patent application.
  2. In what environment does the invention operate? This inquiry aims to identify crucial devices or components that elucidate how the invention functions.

Practical Recommendations

Drawing from his extensive experience, Neil recommends patent professionals to compile their list of questions or adapt his outline to individual needs. Being prepared with these questions ensures that even with minimal information, one can glean everything necessary about the invention during the inventor interview.

In conclusion, navigating an inventor interview with limited information need not be a daunting task. By following Neil’s structured approach, patent professionals can master the art of extracting vital information about an invention. His advice stands as a testament to effective preparation, innovation, and adaptability within the patent field, helping to ensure clarity and thoroughness in each patent application.

Thank you for reading! We hope these tips help you improve your patent drafting skills. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Efficiently Handling Overwhelming Amounts of Invention Disclosure Materials

Greetings, fellow patent enthusiasts! We’re back this week with valuable insight from Neil Kardos on dealing with a common challenge faced by patent practitioners: receiving an overwhelming amount of invention disclosure materials prior to a call with inventors. While most patent professionals might be familiar with handling situations where there is too little material, Neil sheds light on what to do when faced with an abundance of information that can potentially consume an entire day of review.

Navigating the Flood of Invention Disclosure Materials: When confronted with a plethora of materials, Neil advises that the first step is to skim through the documents to get an overall sense of the content. The main objective at this stage is to identify technical information and elements that appear new and innovative. Making a note of the slides or pages that contain interesting technical content is crucial to preparing efficiently for the inventor call.

Framing the Conversation: Once Neil has an idea about the potential new features, he supplements his regular outline of questions for inventor interviews with inquiries specifically related to those features. This tailored approach allows him to focus the conversation on the most relevant and critical aspects of the invention. During the inventor call, he also sets the tone by addressing the abundance of materials and enlists the inventors’ help in identifying content that is pertinent to the patent application, particularly focusing on the novel technical aspects.

Efficiently Capturing the Invention: By framing the conversation around the key features and focusing on what’s new and innovative, Neil ensures that the conversation is purposeful and streamlined. This approach enables him to efficiently capture and flesh out the details of the invention without being bogged down by unrelated or extraneous material.

Confirmation and Adaptation: During the call, if the inventor verifies Neil’s assumptions regarding the new features, he proceeds with his supplemented outline of questions to delve deeper into the invention’s specifics. Additionally, he makes sure to address the slides or pages that he earlier identified as important. However, if his initial assumptions were incorrect, Neil seamlessly transitions back to his original outline of questions to gain a comprehensive understanding of the invention.

In conclusion, handling an overwhelming amount of invention disclosure materials can be daunting, but using Neil’s practical approach provides valuable guidance for patent practitioners facing this challenge. By quickly skimming through the materials, focusing on the new and interesting technical aspects, and seeking the inventor’s input, one can efficiently navigate through the flood of information and conduct a productive and insightful inventor call. This not only saves valuable time and effort but also ensures that the patent application process is effective and aligned with the invention’s core features.

Thank you for reading! We hope these tips help you improve your patent drafting skills. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting!

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Boosting Patent Application Drafting Efficiency and Quality

Greetings, fellow patent enthusiasts! Today, we’re excited to share an invaluable tip from Neil Kardos on how to improve the efficiency and quality of your patent application drafting. We’ll delve into the benefits of this approach and explore how it can streamline the patent application process.

When it comes to patent drafting, timing is everything. One of the most significant time-saving strategies Neil employs is to draft claims and figures promptly after conducting an inventor interview. By capturing the essence of the invention while it’s fresh in his mind, he achieves remarkable results.

Here’s how he does it: After scheduling an inventor interview, Neil blocks off a few hours afterward to work on claims and figures. By setting aside a dedicated block of time immediately after the call, you can capitalize on the freshness of the invention in your mind, ensuring top-notch claims and figures. Ideally, he aims to draft the complete set of claims and figures right after the call. In certain cases where he’s deeply familiar with the technology, and the inventors are savvy, he may even prepare an independent claim before the call and get real-time feedback from the inventors—an incredibly beneficial practice.

In the real world, though, urgent tasks can sometimes intervene. Neil has a savvy solution for this too. At the very least, he outlines an independent claim and explores some dependent claim ideas before attending to other pressing matters. This keeps the momentum going and avoids the common pitfall of relearning the invention from scratch later on.

Neil’s method is a game-changer, providing a structured and streamlined approach to patent application drafting. With this technique, you’ll not only increase efficiency but also enhance the overall quality of your work.

Thank you for reading! We hope these tips help you improve your patent drafting skills. Don’t forget to come back for more tips in the next installment of the Practical Patents Series. Until next time, happy patenting! ????????

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Improving Patent Application Readability and Avoiding Misinterpretation

Greetings, patent enthusiasts! In this latest blog post, Neil Kardos sharessome valuable tips for enhancing the readability of your patent applications and avoiding potential misinterpretations that could arise due to wordy writing.

As patent lawyers, we often find ourselves delving into complex technical details and intricate legal concepts, which can lead to a natural tendency to be wordy in our writing. However, it’s crucial to remember that great writing is often characterized by its conciseness and clarity. Therefore, we urge you to embrace brevity when drafting your patent applications.

One common issue Neil encountered while reviewing a patent application the other day was the excessive use of the phrase “in order to” instead of simply “to.” It might seem like a minor difference, but it can significantly impact the clarity of your patent application. In fact, Neil firmly believes that you can replace the phrase “in order to” with the word “to” in 100% of cases without losing any meaning.

Let’s take a look at an example to understand the significance of this change:

“The system may process multiple events… In order to save time.”

On the surface, this sentence may appear harmless, and most of us would interpret it as the system processing events to save time. However, if we reevaluate the phrasing, another interpretation becomes possible:

“The system may process multiple events in order… To save time.”

Here, the meaning slightly changes, leaving room for ambiguity. Are the events processed to save time? Or are they processed in a specific order that ultimately saves time? Such ambiguities can introduce uncertainties in your patent application and potentially lead to challenges during the examination process.

To uphold the clarity and precision of your patent application, it’s crucial to be succinct in your writing. As they say in the movie Ocean’s 11, “Don’t use seven words when four will do.” By trimming unnecessary phrases and being concise, you can convey your ideas more effectively and minimize the chances of misinterpretation.

In conclusion, it is strongly recommended to adopt a succinct writing style for your patent applications. Not only will this improve the readability for patent examiners and other stakeholders, but it will also reduce the risk of ambiguity and potential challenges during the examination process.

We hope these tips help you improve your patent drafting skills. Thank you for reading! Don’t forget to come back for more tips in the next installment of the Practical Patents Series.

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Navigating the Pitfalls of “At Least One” in Patent Claims

Greetings, patent enthusiasts! In this latest blog post, Neil Kardos shares some valuable tips on how to avoid common mistakes in patent applications.

When it comes to drafting patent applications, precision in language is crucial. One common mistake is the misuse of the phrase “at least one of.” In patent applications, it is customary to include this phrase to indicate that certain data or elements can be present in different combinations. However, there is a significant distinction between using the word “and” versus “or” in this context.

Let’s consider an example: “Wherein the data includes at least one of a name, an address, or a phone number.” Notice that the word “or” emphasized. Unfortunately, some patent practitioners use the word “and” instead, which can be a mistake.

To illustrate why using “and” can lead to confusion, let’s use a simple analogy. Imagine someone saying, “I’m going to the grocery store, and I’m going to buy at least one of an apple, a banana, and a carrot.” Does this mean they intend to purchase at least one apple, at least one banana, and at least one carrot?

Most patent practitioners would not intend such an interpretation with this statement, but it’s easy to see how this wording could be misinterpreted. In contrast, if the statement were, “I’m going to the grocery store, and I’m going to buy at least one of an apple, a banana, or a carrot,” it would be clearer.

In this revised version, the speaker could buy only an apple, and the statement would still hold true regardless of how you interpret it. Of course, in real-life conversations, nobody talks like this. So, perhaps a simpler approach would be to drop the “at least one of” altogether and say, “I’m going to the grocery store, and I’m going to buy an apple, a banana, or a carrot.”

However, the desire to be explicit about the acceptability of combinations of an apple, a banana, and/or a carrot is understandable. This is where the phrase “at least one of” comes into play. Some practitioners may also include “or a combination thereof” at the end of the list. There are various ways to convey your point clearly, but our recommendation is to avoid saying “at least one of a, b, and c.”

In conclusion, using the word “and” instead of “or” in patent applications when expressing options can lead to confusion and misinterpretation. To avoid this common mistake, it’s essential to choose your words carefully and consider the implications of your language choices. Precision and clarity are key when it comes to drafting successful patent applications.

We hope these tips help you improve your patent drafting skills. Thank you for reading! Don’t forget to come back for more tips in the next installment of the Practical Patents Series.

Note: This blog post is based on the opinions and observations of the author and should not be considered legal advice. Consult a qualified patent attorney for specific guidance on patent application drafting.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Tips for Improving Readability of Patent Claims

Greetings, patent enthusiasts! In this latest blog post, Neil Kardos shares some valuable tips on how to enhance the readability of your patent claims.

As we all know, patent claims can be challenging to comprehend due to the presence of legal and technical terminology. Neil sheds some light on one particular aspect of claim language: antecedent basis and how it affects the readability of your claims.

Antecedent Basis and Awkward Wording: Antecedent basis refers to using the word “the” to refer back to a word or phrase previously introduced in the claims. This practice often leads to peculiar phrasing, making the claims less accessible to readers. To illustrate this point, let’s consider an example. If the phrase “at least one widget” is used, referring back to it would require saying “the at least one widget,” resulting in awkward language.

Simplifying the Language: A simple solution to improve readability by replacing “at least one” with the phrase “one or more.” By using “one or more,” you can refer back to the widgets as “the one or more widgets.” This change brings the language closer to standard usage, eliminating the unusual phrasing of “the at least one widget.” In some cases, an even better alternative is to use the indefinite article “a” or “an.” For instance, instead of “the system includes one or more widgets,” you can state “the system includes a widget” and then refer back to it as “the widget.” In terms of claim interpretation, saying “the system includes a widget” is equivalent to saying “the system includes one or more widgets.”

Avoiding “One of a”: Try avoiding the phrase “one of a,” as it leads to cumbersome wording when referring back to it. For instance, using “one of a plurality of widgets” would result in “the one of the plurality of widgets.” A more concise alternative by rephrasing it as “a widget, of a plurality of widgets.” This way, you can easily refer back to it as “the widget.”

Enhancing Clarity: In general, it is crucial to be vigilant for instances where phrases create awkward wording upon reference. By identifying these situations, you can find alternative ways to make the language more fluid and understandable. The goal is to improve the readability of your patent claims for a wider audience, including examiners, potential licensees, and competitors.

In conclusion: Neil’s tips provide valuable insights into enhancing the readability of patent claims. By simplifying language and avoiding awkward phrasing caused by antecedent basis, you can make your claims more accessible to readers. Clear and concise claims are essential for effective communication and successful patent prosecution.

Thanks for reading! Don’t forget to come back for more tips in the next installment of the Practical Patents Series.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Unraveling the Intricacies of Negative Claiming

In this latest blog post, Neil Kardos brings to light an essential tip about drafting patent claims – the art of sidestepping negative claiming.

Negative claiming occurs when something that doesn’t happen is claimed, a phenomenon that can make patent claim drafting quite convoluted. For instance, consider the situation where your cell phone receives a specific request from a cell tower and usually responds by sending back a message.

However, imagine if the invention introduces a unique twist where the phone, upon detecting a certain condition that the cell tower isn’t aware of, chooses not to respond as per the norm. For instance, the phone may identify that it’s running low on battery or the request is inapplicable for some other reason, leading to the phone’s decision to abstain from responding.

The traditional patent claim language for this scenario might be: “(1) receiving a request, (2) determining that the request isn’t applicable, and (3) not responding to the request?” However, this formulation feels somewhat cumbersome, and patent examiners are known to frown upon such negative limitations.

Neil has developed a handy workaround for these situations – the use of the word “refrain.” This term implies a deliberate decision to abstain from an action or to halt an event, effectively conveying the same meaning without resorting to negative claiming. Thus, in the given example, the claim could be elegantly rephrased as “refraining from transmitting a response to the request.”

Have you discovered other effective strategies to handle such scenarios? If you’ve encountered similar situations and found effective ways to deal with them, we’d love to hear it!

Thanks for reading! Don’t forget to come back for more tips in the next installment of the Practical Patents Series.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Improving Clarity in Patent Applications: The Red Flag of “It”

In this latest blog post, Neil Kardos shares why the seemingly innocuous word “it” can lead to ambiguity and misinterpretation in your descriptions, and offer an alternative approach to improve your patent application writing.

The Ambiguity of “It”: Consider this example sentence: “When the client device communicates with the server, ‘it’ may send a message based on a triggering event.” Now, pause for a moment and ask yourself: What exactly is the subject of the sentence? Is it the client device or the server that may send the message? Unfortunately, the word “it” leaves room for uncertainty, and its usage can create confusion, especially when different interpretations are possible.

Plain English vs. Translations: Even in plain English, determining the intended meaning of “it” can be a challenge. However, when patent applications are translated into languages with different grammar rules, the potential for misinterpretation grows significantly. Each language has its own structure and syntax, and relying on a vague pronoun like “it” may lead to inaccurate translations and misunderstandings.

The Importance of Clarity in Patent Prosecution: In patent prosecution, the clarity and precision of your language are crucial. A well-crafted patent application should support the claims and clearly define the scope of the invention. Using the word “it” can inadvertently weaken your case by introducing ambiguity that could be exploited by competitors or create confusion during examination.

Addressing the Issue: To avoid these complications, it is advisable to replace the word “it” with the actual name of the subject you are referring to. In our example sentence, instead of using “it,” you could specify whether it is the client device or the server that may send the message based on the triggering event. By explicitly naming the subject, you provide clarity and eliminate potential misunderstandings.

In conclusion, the word “it” may seem innocuous, but in the context of patent applications, it can introduce ambiguity and create confusion. By replacing “it” with the actual name of the subject, you enhance the clarity of your writing and reduce the chances of misinterpretation, especially in translations and during patent prosecution. Remember, precision and clear communication are essential in protecting your invention and establishing a strong patent. Thank you for reading, and I hope this tip helps you improve your writing in patent applications.

 

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Mastering the Art of List Management in Patent Applications

Neil Kardos covers “Mastering the Art of List Management in Patent Applications”, in this Practical Patents short blog.

Today, we’re diving into the practical patents segment with an essential tip on handling lists in patent applications, particularly in the specification section. In our pursuit to create precise, clear, and efficient patent applications, even the way we handle lists can make a significant difference.

Providing lists of items in patent applications has been a long-standing practice to explain terminology or enumerate examples. For instance, “the sensor data may indicate temperature, pressure, speed, etc.”

Notice the use of the term “etc.”, which is quite prevalent in patent drafting. However, this approach could be improved upon. To illustrate this, let’s understand the intention behind using a list in the specification. There are two key points that we aim to convey:

  1. The items in the list serve as examples.
  2. The items in the list can be applied individually or in a combined manner.

“Et cetera,” or its commonly used cousin, “and so forth,” attempt to encompass both these aspects. However, in reality, they fall short. While they do indicate that the list consists of examples, they don’t explicitly mention that the items can be used individually or in combination.

“Et cetera” translates to “and the rest,” and the usage of “and” in the list might suggest that all items are necessary, which is not our intention. So how do we refine our list handling in patent applications?

To address the first point, it’s crucial to explicitly state that the list consists of examples. You could use phrases like “for example,” “in some implementations,” or “such as.”

For the second point, we want to clarify that the items in the list can be applied individually, in groups, or in entirety. My preferred term for this is “and/or,” as it directly represents the concept we’re trying to express. So our initial example transforms into, “For example, the sensor data may indicate temperature, pressure, and/or speed.”

Now, I’m aware that the usage of “and/or” in patent applications might ruffle some feathers in the patent practitioner community. For those who shudder at its mention, there’s an alternative phrase you could use: “or some combination thereof.”

In conclusion, the way we present lists in patent applications holds more weight than we might initially think. Implementing these strategies can significantly enhance the clarity, precision, and overall efficiency of your patent applications.

Thanks for reading. I hope you find these insights helpful on your patent journey!

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

Avoiding Anthropomorphizing in Patent Applications

Neil Kardos covers why “Avoiding Anthropomorphizing in Patent Applications” is important, in this Practical Patents short blog.

Today, we will discuss a term that seems out of place in the sphere of patents, yet often finds its way into the discussion: anthropomorphizing.

At its core, anthropomorphizing involves attributing human traits, emotions, or intentions to non-human entities, including animals, natural phenomena, and yes, even devices. While this can serve as an imaginative exercise in storytelling, it can lead to confusion when applied to technical documents, such as patent applications.

When inventors conceive a novel device, they often inadvertently anthropomorphize it. The device might “know” something, or perhaps it “tells” another device something. This language may work as shorthand for internal discussions and preliminary design documents, but it introduces potential inaccuracies and ambiguities when drafting patent applications.

Consider a simple scenario: An inventor may describe a device that “knows” its location. While this is an easy-to-understand description, it is not technically precise. When translated into patent-speak, the device does not “know” anything – it’s an inanimate object, not a sentient being. Rather, the device may store or process information that identifies its location.

Similarly, if a device “tells” another device about its location, we’re again sliding into anthropomorphizing territory. A more precise technical description might be that the device transmits a location identifier to the other device.

Why does this matter? When drafting a patent application, it’s crucial to maintain technical precision. The words and phrases you use in your specification could later be needed for the claims. You want to ensure you’re using language that will stand up under scrutiny and is as clear and precise as possible.

Moreover, when dealing with patent examiners and courts, using language that attributes human qualities to your device could lead to a misunderstanding of its functionality and scope, possibly impacting your patent’s enforceability.

And here’s a bonus tip: Avoid using jargon or excessively long words, like “anthropomorphizing,” in your patent applications. While they might showcase your expansive vocabulary, they do little to enhance clarity. Use simple, clear language that accurately describes your invention and its unique features.

Remember, the goal of a patent application is to clearly define the unique features and operation of your invention. Avoiding anthropomorphizing language helps to ensure the focus stays on the technical and mechanical aspects of your device, aiding in the creation of a robust, enforceable patent.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

How a Track One Patent Filing Could Increase Your Chances of Getting a Patent

Neil Kardos covers “How a Track One Patent Filing Could Increase Your Chances of Getting a Patent” in this Practical Patents short blog.

Here is a compelling reason for you to consider prioritized examination, known as “Track One,” at the USPTO, beyond simply obtaining a patent more quickly. Were you aware that filing a patent application with a Track One request could potentially enhance your likelihood of securing a patent? Our patent analytics team at Harrity conducted a comparison between Track One and non-Track One filings and discovered that Track One patent applications exhibit approximately a 10% higher allowance rate than non-Track One applications.

In the realm of business methods, the allowance rate for Track One applications is notably 21% higher! Now, the pertinent question arises: Is the Track One request directly responsible for this elevated allowance rate, or are patent applications with inherently higher chances of success, owing to their “more patentable” subject matter, more likely to be filed with Track One requests?

In conclusion, it is presumed that it’s a combination of both factors. Theoretically, Track One applications tend to be assigned to seasoned patent examiners who are more inclined to grant patents. Therefore, if you possess a patent application encompassing a significant technological advancement, it would be wise to consider filing it under Track One to heighten your prospects of securing a patent.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!

The Importance of Using Commas After “Such As” in Patent Applications

Neil Kardos covers “The Importance of Using Commas after ‘Such As’ in Patent Applications” in this Practical Patents short blog.

As patent applications are legal documents, it is crucial to draft them accurately and without any ambiguity. A common grammatical error that can lead to unintentional narrowing of the scope of a patent application is the improper use of the phrase “such as.” In most cases, the intention of using this phrase is to provide examples of the items listed after it, but failing to use a comma before “such as” can result in the items being considered restrictive clauses and limiting the scope of the application.

For instance, consider the sentence “the network device may transmit packet data, such as a source address or a timestamp.” Here, the intended meaning is that a source address and a timestamp are examples of packet data. However, if there is no comma before “such as,” it becomes a restrictive clause, meaning that only a source address or a timestamp will be considered as packet data, not any other data like a destination address or a packet header.

Using a comma before “such as” can convert the phrase into a non-restrictive clause and make it clear that the items listed after it are only examples and not the only items that can be considered packet data. Therefore, it is essential to include a comma before “such as” to avoid any unintentional narrowing of the scope of a patent application.

In conclusion, patent applications require careful drafting and precise language to avoid any misinterpretation or ambiguity. Proper use of punctuation, especially commas, can help prevent unintentional narrowing of the scope of the application and ensure that the application provides adequate coverage of the invention.

Want more tips? Check out other Practical Patents videos with Neil Kardos here!