A well-worded patent goes a long way toward avoiding costly litigation
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by Michael C. Cesarano
Patent litigation is excessively expensive, time-consuming and unpredictable. Without biting the proverbial tongue in one's cheek, it could truthfully be said that patent litigation should be avoided at all costs. Fortunately, well-drafted patents are more susceptible to predictable outcomes, and therefore, are less likely to be litigated than poorly drafted ones. The use of consistent descriptive language in referring to specific claim elements, and clear explanations that eliminate superfluous language, can go a long way toward avoiding litigation.
The length of time between the drafting of a patent application and the rendering of a definitive legal interpretation of the patent prevents patent draftsmen from receiving timely feedback on the efficacy of their patent drafting. While a patent must be litigated before a legal interpretation is binding, the well-drafted patent can often adequately spell out its scope without the need for litigation. Clarity in drafting, promotes the likelihood that patent claims will be understood by juries, judges and competitors in the manner in which they were intended. The following practical rules are offered as guidance in drafting patents to withstand litigation.
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Be consistent with terminology: The easiest, yet most frequently violated, principle of good patent drafting is to use consistent terminology to describe like components throughout the application. This problem frequently arises when a specification initially has been written by an inventor, and the claims are prepared by a draftsman who is not "a person of ordinary skill in the art." Using different terms to refer to the same element promotes ambiguity and uncertainty. Examples of this problem include indiscriminate use of synonyms to describe a single claim element (i.e., interchangeably using "ridge" or "lip," or "flange" to describe the same component); arbitrarily using "member" when referring to the same component (i.e., "swing arm member" and "swing arm"); using "device" and "mechanism" interchangeably (i.e., "locking device" and "locking mechanism").
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Do not overuse generic terms: "Members," "devices," "portions," and "means" are staples of claim language, yet are frequently overused when more descriptive terminology is available. Although "means for" implies a specific claim construction, "means" is frequently misused when such construction is not intended. When describing a part having a name, both the specification and claims should use the name without including superfluous language: e.g., "heel" rather than "heel member"; "trigger" rather than "trigger means" and "rectifier" rather than "electronic device". Descriptive terms make claims easier to read and more understandable.
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Integrate the claims with the specification: A specification must use proper grammatical and syntactical construction to clearly and cogently describe the invention. The claim drafter must be familiar with the terminology and concepts disclosed in the specification, and integrate them into the claims using the same language. The specification should be used to define claim terms to give them their broadest reasonable scope.
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Write claims logically and introduce visual cues: While a claim must constitute a single sentence, it need not be made unreadable. Claims should be organized in as logically as the subject matter permits. Logical groupings should be set off with punctuation or alphabetical letters. White space should be used to enhance readability.
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Write to the lay audience: Patent litigation usually begins when competitors are faced with business decisions involving patents relevant to their business. If the patent can be read and understood by these frequently non-technical persons, it is possible that litigation may be avoided. The patent draftsman who takes extra time to review and clarify the patent language can save a client many thousands of dollars in potential litigation that is avoided.
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Review the draft as a litigator: The final draft should be reviewed as if being litigated by an adversary. Words should be analyzed for ambiguity and necessity. Descriptive terms must be supported in the specification, and must be internally consistent with all other uses of the term in the specification and claims.
The fundamental goal of patent drafting is to identify the subject matter falling within the protection of a patent. Clarity and understanding of the patent document can be enhanced when the language is internally consistent, is directed to the concepts being described, and is understandable to the non-technical reader.
Michael C. Cesarano is head of the Patent Prosecution Department at Feldman Gale, in Miami. He can be reached via e-mail at mcesarano@feldmangale.com
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