Only Litigators Should Draft Patents

Wes Whitmyer Jr
Jul 15, 2019 · 5 min read

By Wesley W. Whitmyer, Jr.

Not every person is a match for every job. Patents are expensive and complicated legal documents. No less authority than the US Supreme Court noted long ago that “[t]he specification and claims of a patent… constitute one of the most difficult legal instruments to draw with accuracy.” Topliff v. Topliff, 145 US 156 (1892). It stands to reason, then, that care should be taken to choose the right person for the job of drafting your patents.

So why are companies increasingly leaving their patent drafting to attorneys with no patent enforcement experience? Likely it’s the current fascination with patent data that is driving this trend. Companies are managing their patent portfolios on a COST basis. What is the cost per patent? Patents per employee? Cost per claim? Average pendency? Time per amendment filed? Etc.

Ask a successful patent litigator, however, and you will get a very different set of patent portfolio metrics focused on VALUE as opposed to cost. How has the market changed based on the issuance of your patent? How has your market share changed? How have competitors reacted to your patent? What royalties/damages have you collected? And finally has your patent program funded itself while your business has grown?

A well-drafted patent blocks a competitor from offering a certain feature (or combination) in the marketplace. The patent owner thereby enjoys a competitive advantage for a limited time. None of this should be new or controversial to anyone familiar with the patent landscape.

But, the two things that should be immediately apparent in this landscape, apparently aren’t. First, the decision about what patents to file is critical to the strategy and success of any business. If the filed patents don’t block competitors from offering a feature that customers want to buy, the patents are an expensive waste of money.

Second, if the patents cannot be enforced to prevent a competitor offering the target feature, the patents are also an expensive waste of money.

Shifting patent drafting, between a variable pay-as-you-go cost with outside counsel and a fixed cost with employees, cycles with the managerial fashion of the day. No matter the managerial preference, strong arguments exist for making sure the patent drafters of the moment have significant litigation experience.

Employee drafters are captive and have direct access to your technical and product staff, but what looks like synergy can easily become a straightjacket with patents drafted by rote to products. The best argument for in-house patent drafters is that they in theory have direct regular access to company management so that the patent strategy follows the business strategy. The patent claims are designed to shape and mold the marketplace, blocking competitors from features and not just covering products. Drafters need to interface with business managers, receive customer feedback and be involved with solutions to customer issues, so patent claims can be block competitors from solutions customers seek. Patents directed to those issues have the best chance of adding company value, if not fully funding the patent program.

Outside drafters, while less likely to have access to business managers, may through their representation of other clients have a better sense of competitive landscape and possibly also have more litigation experience giving them a perspective on patent drafting which is much less likely to be product based. They are freer to be purpose-based drafters as opposed to product-based drafters of patents. And unless they too are subject to the tyranny of data analysis they can focus patents on features in a sustained and strategic effort to carve out market segments for their clients and add value to their businesses.

In either case, patents drafted by litigators with significant enforcement experience are better patents. These drafters know how seemingly plain language gets twisted into knots during litigation and can make simple claim language adjustments which take away whole arguments in a litigation context. If they are highly skilled, they can write patents competitors won’t even challenge. Patents that judges and juries understand on their face, robbing competitors of legal argument and building client value.

In order for patents to be worth the cost of procuring them, they must be enforceable against competitors. It’s not enough to aim your patent fusillade at the correct target, to be successful, a patent actually has to hit the target.

This is where patent drafters make many errors that patent litigators would not make. The simple reality is that patent litigators exploit errors repeated every day by patent drafters with little to no litigation experience. Examples abound.

My recent Post cautioning against mixing trademarks with patents is a good first tip on what drafters should avoid. Don’t put the patent owner’s trademark into her patent claims. Any litigator can see that mistake a mile away — customers of the patent owner are the only possible infringers! In case you think this error is impossibly obvious I can report that it appears twice in a single owner’s patents (message me if you want the numbers).

Not focusing patent claims on the product (or service) that your client wants to prevent a competitor from offering is another and very common error. Methods of making and/using are not very useful in the litigation context. You rarely have good pre-suit infringement evidence and/or you will need to sue or at least subpoena a potential customer to prove infringement — not the best way to grow the patent owner’s business.

Focusing the patent too literally on the patent owner’s product is possibly the most common and the costliest error of all. Competitors are much more likely to offer their own version of your patented feature than they are to just copy your product. Copying just doesn’t exist as frequently as it is alleged in litigation. So, patent claims focused on the owner’s product as opposed to the feature you are trying to block in the marketplace are much less likely to be infringed — and therefore much less valuable.

One final issue that litigators prey upon in poorly drafted patents is that “broad” claims often mean small damages. As understood by unskilled patent drafters, “broad” claims have all elements/structure that might give the claim context and meaning to a judge/jury/marketplace removed. Patent owner’s would of course rather collect a royalty on a system for installing interior panels in a vehicle at a value of $500 per vehicle than a royalty on 100 plastic clips at a value of $0.80. The patent drafters strenuous work to obtain a “broad” patent claim has robbed the patent owner of any real value in the patent.

A corollary to “broad” claims is that after removing all the necessary-for-use structural elements that might drive significant damages, these claims often also include vague adjectives that litigators use as ready made no-infringement arguments. Most litigated patent disputes turn on the meaning of a word or two, and when that word is an adjective the competitor/infringer has the upper hand. Expert testimony will give them an argument to try and exhaust the patent owner’s enforcement attempts.

Managing a patent portfolio on a cost, as opposed to a value, basis is a common and increasingly fashionable error. “Broad” claims by cost-effective drafters with little or no litigation experience gut cost-effective patent enforcement and rob patent portfolios of any competitive advantage or hope to fund themselves.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

© 2019 Whitmyer IP Group, Stamford, Connecticut.

WHIPgroup

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