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
TIPS DURING DRAFTING
TIPS DURING PROSECUTION
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.
Ashley Sloat, Ph.D.
Startups have a unique set of patent strategy needs - so let this blog be a resource to you as you embark on your patent strategy journey.