Patent practitioners are prolific writers. Consider that we write patent applications and responses to Office actions all day long, pretty much every day. Each of these documents is reviewed, revised and (based upon client instruction) sent to the United States Patent and Trademark Office. Often, each of these documents is perhaps the length of a term paper for a college class, a chapter in a nonfiction book or a technical magazine article. Yet, for all this writing, sometimes the allowability or rejection of a patent comes down to interpretation of a single word, a phrase, or a subparagraph in a claim, and arguments about same. Given this, why do we do so much writing? We write so much, in part, because we do not know in advance which word, phrase or subparagraph (if any) is going to be the most important one in a claim should the claim be litigated. We write claims sets that we believe are robust and will survive examination and possible tests in courts. We write dependent claims that surround what we believe are the point or points of novelty in an invention. The entire claim set must be supported, in the specification of the patent application. So, we write specifications that explain the details of the invention and that allow claims to be amended during the process of examination, i.e., during patent prosecution. This is why we write so much in this profession. I enjoy writing, which is one of the reasons I chose to be a patent agent.
We will explore patenting strategy, claim language, court rulings, perils, pitfalls and gotchas, and other topics related to high-tech patenting.