The Structure of a Patent

• Author: Donald S. Rimai
• Profession: Recently retired from Eastman Kodak, where he worked as a researcher and intellectual property manager in digital printing and adhesion science
• Pages: 81-103

81

It is not just failures of the big-picture strategy that can reduce a patent ’s

value —legal technicalities can render your claims useless against your

competitors . Patents that are not carefully planned and dra ed may not

give the patent owner any e ective degree of protection of his intellectual

property .

When formulating patent strategies, the structure of patents is even

more important to consider. A poorly worded application can impede

or prevent one from having the other patent applications in the portfolio

allowed, or may compromise the quality of other patents that are ultimately

issued. Remember that an invention can only be claimed once. Claim trees

comprising the independent and dependent claims for all the conceived

applications have to be carefully designed to ensure that the technology is

adequately and appropriately protected.

Because of the possibility of diminishing, and even destroying, your

patent ’s value through seemingly insigni cant mistakes during the writing

of a patent application , writing a patent application is work for an expert ,

i.e., a quali ed, licensed patent practitioner . Giving this job to someone

who is unquali ed is an expensive, high-risk/low-yield gamble. At best, a

patent that was not well written will lack strength in court; at worst, it will

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 e Structure of a Patent

82 Patent Engineering

not be issued at all. Filing an unsuccessful application costs every bit as

much as those that lead to an issued patent, and presents your technology

to the public—including your competitors —literally teaching them how to

practice your technology while not protecting your intellectual property.

Care must also be exercised when prosecuting the patent application , as

all comments and explanations you present to the examiner become part

of the permanent record of any patents that are ultimately issued.  ese

can be obtained by anyone against whom the assignee wishes to “assert ”

the patent (i.e., sue for patent infringement ) and can provide an excellent

defense if the accused can argue that what the assignee is now stating as the

meaning of his patent was not what was stated to the examiner when the

patent was allowed.

Hiring a capable patent practitioner minimizes your chances of losing

patent value due to subtle mistakes in your initial application . Moreover,

comments made when prosecuting one application can undermine the

other applications and, even worse, can be used to restrict issued patents

that you already own or even be used in a trial to have those patents

declared invalid .

Patent Practitioners

If patent practitioners are the ones who should write and prosecute patent

applications , why do inventors and assignees need to understand the struc-

ture of a patent ? A patent practitioner may  le applications on a number

of di erent technological areas. It is not feasible for a patent practitioner to

be an expert in the technology for which the inventors are trying to obtain

a patent. More o en than not, the practitioner relies on the expertise and

insights of the inventors and assignees during the writing process. Because

of this, patent applications are only as good as the information the inven-

tors have given to the practitioner .

For the inventors and assignees to ensure that the practitioner has

access to good information, they must be familiar with the kinds of

details he will need. In cases where the assignees and inventors are di er-

ent people, it is especially vital that the inventors understand the bene ts

of the information they are providing, and are incentivized to provide

it. All parties must be familiar with their company’s strategy so that the

information put forth in the application strikes a balance between what

is required to obtain the patent , with that which can be withheld in order

to ensure that the ability to  le future applications on related technology

is not compromised.