There are two things lawyers use daily: a chair and a word processor. Smart lawyers get comfortable with both. For me, adjusting my chair is straightforward. Adjusting my word processor (and my word processing habit) is not.

Butterick helps you make the adjustment from the typewriter rules that you learned in school. As a result, your documents will have predictable style. Your document’s style will clearly guide your reader. Will this make your document more persuasive? Yes, with surprisingly little work.

If you are still not sure whether you should buy this book, just spend a little time at the companion website: typographyforlawyers.com. The advantages of the book over the website are three: better guidance for choosing a professional font, more examples of before/after, and word processor specific advice. The only thing missing is CLE credit.

Finally, I spent about 2 hours on the website and 4 hours with the book. This included the time spent modifying my default templates, fiddling with word processor defaults, buying & installing fonts, and incorporating the advice into my workflow. Looking at documents that I create now, I feel great about the return on the time invested.

You can buy this book at Amazon.

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Book Review: Typography for Lawyers by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

I’m trying to write a patent myself and have a question about a possible contradiction in my claims. Briefly, the ‘problem’ claims are:
1. Apparatus (blank), comprising:
an X (blank);
a Y on the X; and
a Z.
2. The apparatus according to claim 1, wherein the Z is the Y.
Does the inclusion of Z in claim 1, especially following the word ‘and’, prevent me from saying that Z is Y in the dependent claim 2?
~ New York

Foremost, I can not imagine why you would want to structure your patent claims like this. I can only guess that, without any guidance, you are trying to outsmart and outwit yourself. Please do not be offended, it is a good sign. I think everyone goes through some mental gymnastics on their way to writing good claims. I sure did.

What is the function of the patent claims?

With patent claims, you describe how your invention is different from everything that has come before your invention. And, at the same time, you describe as little about anything else as you can get away. It’s tricky. I can spend as much as 40% of my time writing a patent on getting the language and structure of the independent claims correct on an initial application.

First, to be clear, I recommend that everyone use a patent attorney to write and file a patent. There is a lot of nuance in Patent Law, and, you want someone who deals with patent law everyday to do the heavy lifting.

On the other hand, sometimes independent inventors need or want to write their own patents. If that is what you want to do, I suggest that you take the job seriously. Here is the advice I give to anyone who wants to write a patent:

How to train like a Patent Attorney

1. Start with reading Patent It Yourself by David Pressman. This is just an introduction. Pressman’s system is overly simplified for lay people. A better introduction is Jeffrey Sheldon’s How to Write a Patent Application.
2. Take at least one Patent Drafting Course. This will give you hands on experience writing a patent with guidance from a mentor. Here are a couple of popular courses: PLI and PRG. Be sure the course you take offers CLE credit for lawyers. These courses are typically reviewed by bar organizations to be sure the content keeps lawyers educated over time.
3. Read (and stay familiar with) the following sections of the MPEP: 600, 700, 900 and especially 2100. The MPEP stands for the Manual of Patent Examination Procedure. It has 27 volumes and 6 appendixes.
4. Finally, if it is still available, try to get a copy of the “Underground Patent Mentor” by Paul Hentzel. The text is way out of date, but, he has a down-to-earth, old-school approach to patent drafting and prosecution. By seeing the contrast between old school drafting methods, and, new school drafting methods (like in the PLI and PRG courses), you can start to appreciate the nuance.

By following this action plan, you are essentially training to become your own patent attorney. This could be a smart move, especially if you have a lot of inventions or if you need to file many improvements for your invention. This happens often when you begin to build prototypes and commercialize inventions.

Lazy patent claim option

If you are really lazy, there is another option. Do not write any patent claims at all. If you represent yourself before the patent office, the Patent Examiner is required to write a patent claim for you. Be warned, the Patent Examiner probably has not had any training in writing patent claims either. Likely, the Examiner has just read many more claims that you.

Dire warning about Patent Litigation over your future patent claims

This seems like a lot of work. Remember, if the patent enjoys commercial success, an opposing lawyer will likely have a million dollar (or more) budget to pick apart your patent, while trying to invalidate it. If you understand modern patent drafting theory, you can avoid rookie mistakes.

Good luck with your application and your patent claims.

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How do I write my own patent claims? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

Pending Patent Value: Chill the Competition

While your patent is pending, it remains secret. The competition does not know what is new and different about your invention. The competition faces uncertainty if they choose to copy the invention. They cannot attempt to design around your patent if they do not know the patent claims. So, they copy at their own peril. While pending, the patent value includes the ability to maintain secrecy.

Certain consumers are also savvy about the words patent pending. For these consumers, the words, patent pending, indicate that the product is unique. If they like a patent pending product, they do not price shop – they buy now. This can create an additional retail benefit for certain products marketed to certain consumers. So, another patent value is marking a product patent pending.

Many new small businesses maintain patent pending benefits as long as possible. To gain an extra year of patent pending, they file a provisional patent application. This strategy is sometimes called “time-shifting” by patent attorneys. The strategy shifts the time to prosecute, issue, and pay maintenance fees back by one year. This strategy lowers the initial cost of the patent application because the USPTO filing fees are lower. Delaying all of these patent costs can be a big benefit for a new, small business.

Published Patent Value: Court Ordered Royalties

The published patent value is the ability to collect a royalty from the date of patent publication. If someone infringes your patent, a court may later be able to force the payment of a reasonable royalty from the date of the patent publication. Of course, you have to complete the patent process, obtain a patent grant, and win a patent lawsuit without substantially changing the patent claims from the patent publication. This is most likely to happen with a well researched patent.

Patent applications automatically publish 18 months after filing. You may request early publication. You can also choose to prevent publishing if you promise to waive your patent rights in foreign countries.

So, by choosing to keep the patent unpublished, patent applicants are choosing secrecy over royalty. There are some good reasons to choose secrecy: your invention is difficult to copy without the patent, your competitors have not caught on to your success, design-arounds would be difficult to find without the patent application. There are some good reasons to choose publication: proof of patent existence to potential purchasers, and, elimination of certain protest rights at the USPTO.

The published patent value loses the value of secrecy and gains the value of a possible court-order royalty. Yet, you do not have the right to pursue a lawsuit.

Granted Patent Value: Excluding competitors.

The granted patent value is the ability to exclude your competitors from making, using or selling your invention. While a patent is pending or published, you cannot use the patent application to sue your competitor in court. The patent office must issue your patent before you can enforce your patent rights.

After the patent grant, you can your competitor in court, which will force your competitor to try and uncover evidence that your patent is not valid, or, that they do not infringe the patent. It is not unusual for legal costs to approach or exceed seven figures. A granted patent value is the threat and cost of a lawsuit.

The lawsuit costs include attorney fees, technical research fees, expert witness fees, court fees and the chance that money damages could be tripled. So, if you have competition that is copying you unfairly, you may wish to have your patent issue as quickly as possible, to get access to a court. By accelerating the examination of your patent application, you are also accelerating your legal costs.

Sometimes, the cost of a patent lawsuit is out of reach. The value to exclude a competitor from making, using or selling an invention can be so hight, some patent attorneys will work for a chance to share any award in the patent lawsuit. However, finding a contingency-fee patent attorney can be a time-consuming, because, evaluating a patent case can be difficult. The ability to find a contingency-fee patent litigator can depend on the strength of your patent. Again, this is another good reason to do additional research prior to filing a patent application.

Another common reason for wanting a patent to issue quickly is venture capital. Since the value of the patent is much higher after issue, some venture capitalists may require an patent grant before making any sort of investment. A pending investment is a valid reason for requesting accelerated examination at the patent office.

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Patent Value: Secrecy, Royalty, and Exclusivity by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

We are a very small sports fitness company. We train clients at our gym. We also market a product on eBay that we manufacture. We call this product a Resistance Trainer. We use it at our gym, too. It’s a very safe and inexpensive product that uses your body weight as resistance for a wide range of exercises. The military, for example, uses similar training. We market our product in our gym and on Ebay. Recently, we received an email from a company that purchased our product and said it was in violation of the patent they had on their product called a Resistance Training System. We contacted the company and discussed our product. They felt that they needed to protect their business, hence the contact they made with us. They again asked us to cease marketing our product. I found their patent and read it. I’m not a lawyer and have never read a patent before. What I found was a very vague description of what the product does. It was so broad that it could cover a wide range of products that use body weight as a training resistance. How do I know if I am in violation? We are a very small business; and we have only sold a few dozen of our trainers. However, we feel it could be a nice source of additional income down the road. Can you tell me how we be sure we are not in violation of the patent? We feel like we are being bullied by a larger company, realizing our ignorance of the law. Any guidance you can give me would be greatly appreciated. Thanks, Dave

The long and short of my answer is this: talk to a patent attorney immediately.

Since you see potential value in continuing to sell the product, then the advice of a lawyer is now a cost of doing business. The uncertainty and discomfort that you now feel is one of the advantages your competitor has gained by going through the long and difficult process of filing for a patent. If you do not seek a lawyer, if you continue to market your product, if you are sued, and if you lose, you could be facing triple damages, because you know have knowledge of your competitor’s patent. So, one measure of patent infringement damages could be any profit-that-you-made times three. Sure, there are many IFs, but, you know this competitor has spent thousands or tens of thousands already on just the legal work to obtain the patent. There could be a patent infringement lawsuit waiting to happen to you.

Do not believe that you are an unlikely target for a patent infringement lawsuit because of your small size. When a company seriously sets out to start enforcing their patent rights, they may intentionally pick on small companies first. They know that the small companies will do anything not to defend an expensive patent lawsuit. They know that small companies enjoy the business certainty of a settlement or a license agreement. By setting up several small victories and licenses for their patent, the company will now have an easier time going up against larger companies.

It is best to respect the intellectual property rights of others. However, as you say, you are uncertain of what those rights might be.

The language in the patent is most likely not vague. When a patent attorney reviews your situation, he will also look at their patent, your product, the patent’s file wrapper (or, the history of the patent so far at the Patent Office), dictionaries (possibly including technical dictionaries and literature) and previously decided cases. By making a thorough review, the patent attorney can help you understand your options and give more precise meaning to the terms. Maybe there is an opportunity to design your product differently. Maybe there is an opportunity for your prior invention to invalidate their patent. Maybe there is an opportunity to search for invalidating prior art. Maybe there is an opportunity to license their technology or patent. Maybe there is an opportunity to write an opinion of non-infringement. And maybe it is nothing to worry about; or maybe your lucky to get a chance to stop before they sue you. Go see a patent attorney, today.

If your budget is limited, then just be upfront with your patent attorney about how much you wish to spend. Some patent attorneys offer free consultations. If so, take your product and their patent with you. Most attorneys will work with you at the budget that you set, provided that you understand that the potential options may be limited by your budget. Just remember, make a good business decision: the amount you spend on legal advice should only ever be a fraction of what you hope to gain in the marketplace.

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Am I violating a patent when the patent is written so vaguely that the patent covers a wide range of products? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer

This is part of a TV campaign to inspire children. If you need to inspire our youth to invent, try visiting http://InventNow.org, with is a joint venture of the USPTO and the Ad Council.

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You can determine how your invention is different from earlier inventions by conducting a “prior art search.” Inventions that come before your invention are referred to as “prior art” by patent attorneys. The differences between your invention and the prior art can be determined by comparing the invention and the prior art. A “prior art search” finds similar inventions. You and your patent attorney can analyze these inventions to determine the potentially new parts, functions, steps or combinations. The search can guide how, or if, the invention differs from the other, early inventions.

These differences can show how the patent is new. The new portions of your invention are the portions that you may prevent your competition from doing after the patent issues.

This is important, so here it is again.

The new portions of your invention are the portions that you will eventually be able to prevent your competition from doing.

Searching at the Patent Office, in the U.S. and abroad

To compare the invention to the prior art, you need to first locate the prior art. A prior art search is typically performed by a patent attorney, a professional patent searcher, or sometimes both.

Prior arts searches are imperfect by nature. The searcher must identify keywords, patent classes, or combinations of both to identify related patent art. The searcher may consult with the U.S. Patent Office to aid in classification. The searcher can use proprietary databases, the identical search tools available to Examiners, or both.

The patent classification system used by the United States Patent Office and the International Class system may not always classify other patents that are pertinent to your invention within the classes searched. There are more than seven million issued United States patents and a quickly growing body of patent publications. Examiners classify these millions of documents in more than 100,000 classes. More than one thousand examiners may be involved in classifying and cross-referencing to other classifications. Examiners can have different opinions regarding proper classification. Patents may not contain the keywords that the searcher deems relevant to the invention. Some Examiners have developed personal libraries of favorite, non-patent technical literature. Some patents may be written in foreign languages. Finally, only published patent art may be searched. Patent applications remain secret until published. Even secret patent applications can be used to prevent your patent application if the secret application is eventually published.

Even with these limitations, patent searches are the best known way to determine the differences between your invention and the prior art. Your patent attorney can analyze your invention and the prior art to help you understand how your invention is new and different. Patent attorneys are trained to find small, important differences.

Do not underestimate your own ability to spot differences between your invention and the prior art. Your ability to determine the importance of these differences may be better than your patent attorney’s ability. This is because you know your customers, your industry, and your invention better than your patent attorney.

Keep your friends close, enemies closer – How knowledge of your competition can help your analysis.

Before you conduct a prior art search, you may wish to spend some time researching your competition and any relevant technical literature. Many patent searches are limited to only patent prior art. Prior art searches that include the Internet, technical literature, and competitor publications can cost more than filing a patent application, when done by a patent attorney or professional searcher. Doing this yourself saves money and has other obvious benefits: knowing your competition, or potential competition. When you provide your patent attorney with additional information prior to the search, your patent attorney can consider this information when analyzing your invention. Some good places to search include:

Internet Search Engines

• Google.com
• Alltheweb.com
• A9.com
• Archive.org

Other sources

• Technical literature at a nearby, large public or university library
• Competitor’s product catalogues
• Governmental filings of competitors

• SEC filings *FDA filings

• Manuals
• Newspapers and Periodicals
• Trade publications
• Internet newsgroups

As a result, you may also find new competitors or competitive products. This information generally increases the quality of the patent search process and business plan.

Read the Prior Art Carefully; Find the Differences.

You should carefully read about the other inventions, including the prior art documents, technical literature, and any other information, and compare them to your invention. Note the differences.

What is the effect of preventing competitors from acting on these differences?

Would prevent your competition from using these differences (or any new sub combination), give you a significant advantage? If so, the patent may worthwhile. If not, the patent may not be worthwhile. The resulting patent protection has the potential to be very strong, regardless if the claim is broad or narrow. For example, if the differences allow

• cost savings
• quality increases
• unique value propositions
• reduce risks
• improve durability

then commercial importance may be obvious. In some circumstances, the differences can prevent the entire practice of the invention.

Shortcut: Another way to think about Prior Art

You can think about prior art another way. Try imagining that your competitor can do what is described in each of the prior art documents. Imagine that your competitor would be safe from your patent if your competitor only did what was described in the prior art. What would be the value of your patent?

Just so that you know, this method is useful for guidance, but you should discuss any concerns that arise from this method with your patent attorney. Most of the time, this gives great, easy guidance to potential patentability with little thought or effort. However, there are certain legal pitfalls that probably would be to your advantage. Said another way, this method may overestimate what your competition could actually do when faced with your patent.

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Prior Art: How new? by Andrew P. Lahser, Patent Attorney and Trademark Lawyer