When the patent is issued, the draft serves as the specification part of the document. This article will discuss some tips to draft patent claims and common mistakes people commit during patent writing.
So let us get started!
Top Five Core Principles for Patent Claim
Patent writing is not as easy as some clients and companies consider. Often companies want to complete the patent drafting process by just providing an essay or a business plan that outlines the invention. Unfortunately, documents like these are of limited use. Here are the top five principles to draft a patent claim. These tips will surely help you write a perfect patent for your clients.
First of all, you have to understand the invention. You should know every detail about it and be aware of how it works from start to end. Moreover, you should also explore its pieces or parts and different versions of a specific invention for which you will draft a patent.
Secondly, write a brief preamble for an invention. A preamble is an introduction to your patent claim. For this purpose, you can directly start from your client's product's name and provide a brief detail about its working style. For instance, the invention is for a megaphone. So you can take a start from the word "A Megaphone", or you can tell what it can be used to enhance the volume of a person's voice.
Thirdly, you should be careful when you start to write the body of a patent. You should present a specific characterization of an invention. For example, your client or enterprise invented a bicycle. You have to explain its features in such a way that differentiates it from all other existing documents. The pro tip is to use the word "comprise" to elaborate on your company's or inventor's invention parts instead of utilizing the term "consist."
Fourthly, cover up detailed elements of invention physically and logically. All the sentences should be engaged and arranged for disclosing one uniform invention. Moreover, you should bring a specific set of claims for prosecuting your company's invention. Otherwise, an examiner will reject your patent for lacking linkage.
Finally, there are various types of claims. You have to select one out of them. Initially, file a claim for a product. Then write down the manufacturing procedure of that product. In the end, utilize this specific invention in your patent application.
Top 7 Most Common Errors while drafting a Patent
The rejection of most patent claims is that they have a lot of mistakes. Examiners do not accept these erroneous Patents, but some lawyers are unaware of these flaws. The top 7 negative aspects of a patent are explained below to give you an idea that you should not commit these mistakes while writing a professional patent.
Always put your claim into one sentence. If your claim consists of more than one sentence, it will be objected to for providing a vague statement.
Next, a common mistake is the misuse of conjunction, and. If you list features of your invention, use the word "and" before stating the final components.
Again, most persons select the wrong transition words to build a connection between body and preamble. Characterized in that, or consisting of, comprising of, having, or being composed of are most common words for utilizing. We suggest you use "Characterized in that" for the division of paragraphs.
Then, try to use one word to explain one concept. For example, if you use the word "car," do not attempt to change it with the automobile.
Furthermore, make sure usage of "wherein" and "whereas" clauses. For describing a big picture of an invention and giving a broader look at it, these clauses help a lot for the approval of your patent.
In addition, do not go into too much detail and not ever provide an insufficient elaboration of the invention. Instead, be concise in giving specifications of your product.
Last but not least, your result should not be the opposite of your claim. Try to avoid this mistake and purpose the result according to your concept.
In summary, we can say that you have to be super conscientious while drafting a patent claim for your client. In this article, we have discussed five top principles for writing a patent and also explained major mistakes to avoid during drafting.
Are you the in-house counsel or startup with a revolutionary invention and looking for a patent attorney? Are you on a tight budget but need to find quality representatives? Lead IP creates transparency within the market. Our RFx feature, for example, gives you the option to post global tenders so you can receive responses from law firms that you might have otherwise never found.
It has become increasingly important for companies to keep track of the extent, quality, and use of their IP Assets. As a legal representative of the company, you must conquer this arena. Successfully managing an intellectual property portfolio requires more than just unleashing analysts and lawyers on public patent databases.
Advanced patent portfolio management involves more than that. As an IP professional, you have to efficiently develop and manage the appropriate intellectual property protection that your clients need domestically and worldwide. So here are the top 5 best practices that you can use to improve your portfolio management.
It is essential to promote a company-wide awareness of the importance of intellectual property assets and educate them that every employee must protect them. For example, you can give presentations to employee groups that are central to innovation and creation. In addition, employees need to familiarize themselves with the basic IP map of their industry.
In addition, you can also educate management about IP related matters, such as IP strategic planning, docket management, trade secret protection, escrow agreements, valuation of IP assets, IP-derived revenue streams, employment agreements affecting IP rights, IP purchase and sale agreements, due diligence reviews, licensing, acquisitions and divestitures, and conflict resolution. You can also give them high qualified training followed by a quiz so you can analyze their performance, our partner Chawton Innovation Services provides the best in IP e-learning.
Establish comprehensive strategies
Whether your client's business is large or small, and no matter what industry they are in, a well-considered intellectual property strategy is a 21st-century business necessity. Either you want to go defensive or offensive with your client's IP, the strategy must support the business's overall domestic and global goals.
Successful implementation of the IP strategy depends heavily on skilled monitoring, managing, and event reporting for each national and international IP asset in the portfolio. Even if there are only a few intellectual property assets to be managed, a clear understanding of each case's legal deadlines and procedures is required and the ability to balance the costs, risks, and benefits associated with each management decision.
An IP Audit is a systematic review of the intellectual properties owned, used, or acquired by your clients so you can assess and manage risk and remedy problems.
IP audits will vary depending on the need. Still, it is instructive to understand the output of a comprehensive audit. With such an understanding, you can go for a full audit or in phases. Phases can be asset-specific. For example, some types of companies, such as those in the creative arts, may be more heavily copyright-driven and thus may wish to narrow the scope of an audit to copyrights and related issues.
The key is the alignment of expectations and constant communication to ensure a successful outcome. For most intellectual property audits, a written plan should be prepared in advance. Beyond schedule and cost, the project should define the objectives and scope of the audit, areas of inquiry, and responsible parties. It does not have to be complex - Just remember, technology is your best friend for better efficiency.
You should perform IP audits regularly and periodically. An annual audit is reasonable, but there are other circumstances where a supplementary audit should be performed, for example;
● Before a merger or acquisition
● Before an initial public offering (IPO) or other stock offerings
● When seeking major financing
● When changing IP counsellor to evaluate an IP portfolio for possible acquisition or licensing
A full audit includes all forms of IP: patents, trademarks, product get-up, copyright (and moral rights if applicable), designs (both registered and unregistered) and database rights, as well as pseudo-IP rights such as trade secrets/confidential information and domain names.
Ideally, when performing an IP Audit, you should analyze your client's IP assets and the rights of its primary competitors. This will allow your client to make well-informed business decisions.
The main steps in an IP audit are:
● Scrutinize registered IP rights.
● Scrutinize unregistered IP rights.
● Scrutinize IP rights licensed from third parties (including the terms, registration requirements and transferability of any licenses).
● Scrutinize IP rights licensed to third parties (including the review of existing arrangements for profitability and potential competition law issues).
● Scrutinize infringements.
● Scrutinize all agreements and contracts relating to IP rights (for example, ensure any contractual warranties are appropriately drafted to maximize the chance of success of any eventual claim, ensure contract clauses allow registration of transfer of ownership).
● Finally, assess opportunities for exploitation and licensing of rights.
As a legal representative of your client's company - the burden of enforcing IP rights is mainly on you. In other words, it's up to you as an IP lawyer to identify any infringement of their IP and to decide what measures to take.
Of course, your client's IP assets are of little value if they cannot be enforced. So, to enforce IP, you should develop an effective and efficient process for identifying patients that are likely to be infringed and finding potential infringers. The best way to create a perfect system is to use technology and digitalization of the processes. Our partner QK Innovations can provide smart solutions and help you in this regard.
If you suspect that an infringement has occurred, several tools are available for enforcing IP rights, and the exact procedures and rights differ across countries.
Technology has significant effects when it comes to IP operations. No matter the size of your client, technology has both tangible and intangible benefits that will help you make money, speed up the processes, and produce the results your customer's demand. In addition, technological infrastructure affects the culture, efficiency, and relationships of a business.
Digitalization is necessary, so our partner QK Innovations provides smart solutions and helps you through the complexities of digitalization, focused on digital business development, custom software, and the creation of professional websites. Their commitment is you: your IP firm, your needs, and your requirements.
Build an understanding and trust
While the point is obvious, this takes a bit of effort to implement well. Trust is vital because clients need to know that their attorney has their best interests at heart.
There's no one-size-fits-all answer for how to build trust with clients, but here are some helpful tips and tricks for building a solid relationship.
● Always remember that communication is key. Building trust begins with communication. Clients want their lawyers to be reachable and available whenever they feel their need.
● It's important to remember that communication is a two-way street. So, listen, don't just talk.
● When your clients do ask questions, make it a priority to respond promptly.
● You have to understand the client's technology and business objectives. This will help you deliver the best possible service.
● You also have to manage expectations. Of course, you want to provide the best possible service to your clients, but not every outcome will be favourable. So it's essential to be honest with your clients and not over-promise on results you know you can't deliver.
● Clients also still want to know that highly skilled professionals are representing them. So, it's crucial to stay on top of the latest legal changes and industry developments, so you can be sure you're always offering the best client service and most up-to-date advice possible. To do that, you should join communities and platforms where you can hone your skills.
Effective business development is crucial to building a successful legal practice and IP career. While good lawyering skills will always matter, they won’t get you very far if you can’t build and maintain solid client relationships.
The pandemic has changed the way IP lawyers do business; digital is much more important now, face-to-face events and meetings have been severely curtailed, and virtual is the name of the 2021 game. Although the way they must interact with prospects has changed, IP lawyers are still guilty of several mistakes when it comes to business development.
The following are some of the most common mistakes attorneys make regarding business development in the IP industry, plus tips on how to avoid them.
Just Networking, instead of building meaningful relationships
If we could give one tip to every IP professional, it would be to focus on building meaningful relationships with your network. Of course, Networking and expanding your contacts should always be a part of your work routine, but when it comes to acquiring clients, you need to get to know the people in your network better.
“Networking is about knowing more people; Connecting is about knowing people more.” - John Maxwell.
As you meet new people and cultivate relationships with them, you will begin to feel a connection building. If you continue to focus on those relationships, you will soon find yourself with a strong network of not only clients but referral sources and industry leaders that will be of great value along the way of your career.
Hard Selling, instead of providing value
Even if you know for a fact that someone needs your services, do not start the relationship by selling. If you come out of the gates trying to sell, you will make them run for the hills!
This is especially true when it comes to messaging new connections on LinkedIn. People want to work with people they know, like, and trust. However, this person you are trying to connect with has no idea who you are, so how will they learn to trust you? Also, people buy based on emotion, and they justify their purchases based on logic, so they lose the hard sell.
Hearing, instead of Listening
The key to success in any business is to be an excellent listener and look to provide value to that person. For example, let’s say you have a virtual coffee date with a new connection. If you ask the right questions and genuinely listen to their answers, you will start to see opportunities to be of assistance.
Perhaps they express they need help with their IT and computer systems—you can connect them to one of your trusted IT partners. If the referral pays off, you not only just gained the trust of this new person, but you improved your relationship with your referral source. It is a win-win situation.
Confusing Business Development with Sales and Marketing
Many lawyers are uncomfortable with the idea of selling or marketing their services – after all, they went into law, not sales. However, business development should not be confused with these other activities.
While sales and marketing can both be crucial to growing a business, they are different from BD. Business development is more focused on client service, value, and satisfaction. The goal is not to make a hard sell but rather to connect with clients, get to know their particular needs and make sure you’re meeting them to retain their business in the future.
Focusing on the Wrong Clients
A key part of business development is, of course, trying to bring new clients, but it’s essential not to forget your current clients and the new avenues of business they might provide. Your existing clients can be a better source of new revenue than brand new clients. Always remember - A happy, loyal client is worth a lot more than a new client.
Failing to Differentiate
Today’s IP market is a highly competitive one. Simply being a top-notch IP lawyer may not be enough anymore to attract new clients. Clients want lawyers who specialize in what they do and really understand their industry. In the IP industry, it is even more critical.
Not Having a Plan
Business development is not a hit-and-miss activity. While there’s no one-size-fits-all approach, having goals for growing your business and a plan for how you intend to meet them are crucial to success. You should take some time to determine what you want your practice to accomplish in the next year and then figure out the necessary steps to position yourself in those key areas. Without a plan, you will likely end up investing a lot of time in business development efforts that don’t actually pay off. You can seek professional help if you are confused. Together with our partner Graulund Consulting, we specialize in addressing the wide range of issues challenging IP professionals. We work with your organization to develop a customized plan to identify and achieve your objectives.
If you struggle with business development, you’re not alone. Unfortunately, many IP lawyers and IP firms make mistakes in this area, and they can have significant adverse effects on business growth. The good news, though, is that all of these missteps can be avoided if you focus on how you’re going about developing new business and build a solid business development plan.