Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

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Entries in claim drafting (1)


Good Patent/Bad Patent?

Judging the quality of a patent application is very difficult, even for an expert.  For non-patent attorneys, discerning a good patent from a bad patent is probably impossible--at least unitl its too late.

In my opinion, a good patent describes the kernel of the invention.  That is, the core or the seed, the must fundamental part of the invention.  When the patent claims focus on the kernel, the invention will be clear to the examiner and the resulting patent will exclude competitors.

But isn't claiming the kernel obvious?  Don't all patent attorney write patent applications like this?

No.  Many patent attorneys take asimpler route.  A patent application can be written more quickly by simply listing the parts of a device, describing their connections and interoperation, and then writing a claim that describes the preferred embodiment.  However, such a patent application may not capture the fundamental principals (i.e. the invention) that is embodied by the device.  As a result, the kernel may be unprotected and competitors will be able to create alternate embodiments that rely on the underlying invention.

That sounded too much like lawyer speak.  Let me use an example.  Say, your invention is a better mousetrap.  The device is a foam block covered with adhesive and a piece of cheese to which the mouse get glued.  A superficial patent claim might read, "I claim: 1.  A block, adhesive applied to said block, and bait disposed on said adhesive for attracting a pest."  The problem is that a competitor might avoid that claim by placing an intervening layer of material, for example a paper label) between the block and the adhesive.  A better patent attorney would try to find the kernel of the invention.   The invention at its most basic may be using adhesive (not a spring loaded mechanism) for capturing a pest.  So, a better claim might be "I claim: 1. A method of trapping pests, which comprises: applying an adhesive to a surface, and adding bait for a pest to the surface."  This claim would prevent the label alternative discussed above.

The point is a good patent attorney should  be working with you to isolate the kernel of your invention.  If the attorney says, just give me a prototype and I will bang it out, you may be headed for trouble.

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