November/December 2009 / Intellectual Property
Bite Your Tongue
Too much information on patent applications can result in a weaker patent, the author says. Drafters should be aware of the potential pitfalls and avoid saying too much.
For example, a detailed des-cription of an invention’s development, especially if the process appears overly “sequential or logical,” can provide an opening for an obviousness-based attack on the patent’s validity, and belabored comparisons to existing technology can result in unnecessary admissions regarding the prior art. The author suggests, as a cautionary measure, that the inventor or inventors be enlisted to query the patent drafter about the form the application is taking.
The author acknowledges that under some circumstances there can be good reasons to say more on an application than is statutorily required. But he says these reasons must be balanced against the pitfalls of saying too much. A good application is “well-organized, clear, concise and focused on what the patentee considers to be new,” he says.
Specific arguments for patent-ability should be deferred until after the examiner has made arguments against it. To avoid limiting the scope of the patent, unclaimed variations on the invention should not be described.
