Guest Post: Quicker and Better Patents? Tell a Story.

By: Michelle Lewis, J.D.

TL:DR   Everyone loves a good story.  Patent examiners are people, too.  Tell a compelling story in your specification and your interviews and you’ll get better patents faster.
 
Effective storytelling is a recommended approach to many business communicators – leaders giving presentations, marketers selling products, and interviewees seeking jobs, to name a few.  In this post, I am adding inventors (and their patent attorneys) seeking patent claims.  If you tell a compelling story during patent prosecution, you’ll be leveraging a basic human need and engaging the Examiner’s brain to get the business result you seek.
 
As reads, standard patent specifications are real snoozers.  Paragraph after paragraph of information is included to enable every possible direction the invention could take.  It is, by definition, technical.  Court decisions have pushed the use of laundry lists, self-serving definitions, and boilerplate language to new lengths.  Despite the need for all this extra snooze-inducing padding, use the story-telling tips below to flesh out the story of your invention during reduction to practice, drafting, and prosecution.
 
TIPS DURING REDUCTION TO PRACTICE

• Have in mind at least one technical “problem” that your invention is aimed at solving.  Not only will it help your European patenting efforts, where this is central, but it will also cause your data to support the story you will tell in the US
•  Don’t file so early that you have no idea what this problem is.  It is a “race to the patent office” but come armed with enough understanding and data to win the battle
• Be extra careful about including the right controls in your experiments.  Many cost little to add but make the story much more compelling, especially with combination inventions

 
TIPS DURING DRAFTING

• Close the background section with a real problem that your invention solves.  Make it broad enough to not limit claim scope but be sure to discuss it somehow
• Include comparative data when possible – why and in what ways is your invention moving the art?  Yes, it isn’t required that your invention be “better” but if it is, be sure to discuss it in your specification
• Close each data example with the conclusion you want the Examiner to draw
• Make sure your claim language clearly includes those aspects of your invention that were key to solving the initial problem, at least in a dependent claim.  Be prepared to move that limitation (or limitations) into the broadest claim to get an allowance

 
TIPS DURING PROSECUTION

• Re-iterate (or tell for the first time) the story of the invention during arguments: answer questions such as: what have the inventors contributed, what outstanding technical problem does the invention solve, and what is “new” about this work.  You will likely be delving heavily into some of these topics depending on the rejection, but don’t overlook the ability to refocus the Examiner on the story with each substantive response
• Interview, with the inventor, whenever feasible.  Examiners are open to interviews more than ever, and multiple ways of doing so (in-person, through conferencing software at branch offices, and telephonically with and without presentations) are available.  Use these interviews to get the Examiner involved in the who, what, and whys of the invention.  If an inventor is good at presenting – use them!
• During all prosecution try to connect with the human side of the Examiner, if possible.  Patent prosecution is not litigation.  It is a collaborative process aimed at awarding a limited monopoly to inventions meeting the legal requirements.  Building a collaborative rather than combative approach increases the chance of changing the Examiner’s mind.

 
Use these suggestions wholesale or to jumpstart your own approaches to telling an effective invention story in patent drafting and prosecution.  Of course, each of these suggestions need to be balanced with business needs as to the scope of the disclosure and, perhaps, related knowhow or trade secrets.  However, for the great majority of to-be patented subject matter, fashioning a story about the invention, the problem or problem(s) it solves, and how the work has contributed to the art will help.  Tell that story to the Examiner during prosecution and get claims allowed more broadly and more quickly.