Filing a patent application is the first step to getting patent invention ownership and protection rights. But the cost of filing and the ensuing patent attorney fees is a financial investment that may not be possible for some inventors. They attempt to draft and file their patent application themselves to cut down patent costs at the initial stage. In doing so, patent inventors may leave themselves open to invalidation claims and future complications that may arise after the application has been approved.
This is because the expertise of a qualified patent attorney takes into account all existing and future considerations involved in filing a patent application. The various legal aspects applied during the patent process require extensive legal knowledge that a patent inventor cannot comprehend. Such mistakes during the drafting process may be detrimental when competitors find a way around your patent design or during marketing when you’re looking for investors.
For example, one of the most critical elements when drafting a patent application is determining the scope and description of the patent invention claims. If the claims are too narrow or broad and don’t align with the description, the Patent Office can invalidate your patent invention because the application did not meet the writteAn description requirements.
The legal principles of drafting a patent application come with years of practice and experience under the supervision of a seasoned patent lawyer. Furthermore, it’s vital to seek legal counsel before moving ahead with a patent application to understand the implications and considerations of applying for patent protection.
The following case illustrates the complexities involved in drafting a patent application and how it can affect the outcome of a patent infringement case in the Court.
Revolution Eyewear, Inc. v. Aspex Eyewear, 90 USPQ 1733 (Fed. Cir. 2009).
Revolution Eyewear invented a sunglasses lens that could be attached to the prescription lens frame. The prior art related to the patented invention used corresponding magnets to attach the sunglasses lens to the frame of the prescription glasses. This weakened the frame and caused the lens to fall off during movement. The improved, patented version of the product solved these problems by attaching the magnets into projections at the rear of the frame of both the primary and the auxiliary frame. The sunglasses lens was top mounted on the magnetic projections, thus solving the issue of the lens falling off and support for the lens without weakening the frame.
Revolution’s invention was similar to the patented invention but attached the sunglasses lens to the bottom with magnetic projections. They argued that the patent infringement claims were invalid because the description of the prior art patent only discussed the stability and support issues of the device. Revolution further added that the claims were broad enough to include both the bottom and top-mounted sunglass lens, and the claims did not match the detailed description. The Court did not agree, stating, inventors can draft their claims to address one or more problems in the description as long as they pocessed the stated invention.
Conclusion
Patent application specifications must cover the scope of the invention, narrowing or broadening the claims according to the requirements of the patent application. Vague or incomplete specifications can lead to invalidation of the patent or leave it open to patent infringement or design around by competitors. Therefore, consult a patent attorney to ensure your patent application is drafted correctly and follows the Patent Office requirements.
