What is a Good Patent Application?

Introduction & Background

Samar Shah 0:00

Thanks for joining the patent pending made simple podcast. This is Samar; I'm a patent attorney. And joining me is Jamie Brophy. Jamie, how are you? Hey,

Jamie Brophy 0:08

good Samar. How are you?

Samar Shah 0:11

I am doing all right. I'm excited to get this thing off the ground. Finally.

Jamie Brophy 0:14

Yeah. This is super exciting.

Samar Shah 0:18

Yeah. Well, so since this is our first episode, do you want to give the listeners a background on on yourself and what you hope to accomplish? Maybe for this with this podcast?

Jamie Brophy 0:29

Yeah, sure. So I'm a Patent Agent. I've been doing patent stuff for, oh, my gosh, it's hard to say, almost 24 years now. I can't believe it. I started my career at the patent office and was there for about four years, almost five years. And then after leaving the patent office, I've been a Patent Agent ever since that, and I've been working with Samar for, what, three and a half years now. So and I'm excited to, to do this podcast, I think it'll be a great learning experience for us. It'll be a great way for us to educate our clients. And I think we're gonna have some exciting interviews coming up. So yeah, I think it'll be great.

Samar Shah 1:16

That's, that's awesome. Yeah, I can't believe that you have been doing this for this long. That's really cool. One of the things that I really appreciate about working with you is I tend to get very direct answers, you know, when I work with a lot of attorneys, and a lot of answers are well, you know, maybe it depends. But things are always very clear with you. And I think I really personally appreciate that. And I think our clients appreciate that, too.

Jamie Brophy 1:40

Yeah, I don't mince words.

Samar Shah 1:44

That's the best way to be right. I started my career at a law firm in Silicon Valley in California. I wrote a lot of patents for companies like Facebook and Google a lot of software patent applications. I also did some hardware stuff with medical device companies, and GoPro and a few others. So I have quite a varied background in the technology space. From there, I went on to do patent litigation work, I did high stakes, patent trials. For software companies like AT&T and X, Y, and a few others. I did trial work for medical device companies like thermogenesis. I also surprisingly, did some ANDA litigation, pharmaceutical patent litigation work.

And from there, I left to start this firm, and with really wanting to focus on working with clients on the strategy side of things.

When you're when you're working at a big firm, you your job is to just kind of churn out patents, right regardless of whether the patents may be a good idea or not. And I really wanted a platform where we can be strategic with clients about whether they should file patents and what the patent should be about, and how can they be clean more scope or file something that's more valuable? So that's the genesis of the law firm, how I started here and how I started working with you, Jamie, and it's been a been a great ride, I must say.

What makes for a good patent application? ⁠3:03⁠

Jamie Brophy 3:03

Yeah, wow, I didn't realize that you had so much varied experience, you've kind of done a little bit of everything. I think, between the two of us, we have all the bases covered?

Samar Shah 3:15

I would hope so. Yeah. Well, I think that takes us into what I think is a interesting way to kick off thinking about patents is what makes for a good patent application. And to give you some context around this question, I've seen a lot of blog posts and a lot of discussions online about making sure you have a good band application or making sure you have the right patent attorney, but none of it really squarely covers what is a good patent application? How do you how do you think about that? Conceptually, Jamie, maybe you can start us off. And I'm happy to jump in as well.

Jamie Brophy 3:48

Yeah, definitely. I mean, I think kind of, you know, going back to one of the goals of this podcast, I think this is directed mainly at independent inventors. And I also think, you know, working with a small boutique firms such as, such as ours is, you know, a great resource for independent inventors, it's a lot less scary than working with a large firm. And so, you know, for those independent inventors, I would say, you know, starting out, if they just have a pretty good idea of how to make their invention and how it works and how it's used, you know, you can't patent an idea. Like if you have an idea of something, you have to actually know how, how the device or apparatus or you know, whatever is being made and how it's being you have to have some specific ideas of how it can be reduced to practice as we would say, so yeah, I think starting out like that's a good starting point. If you have a prototype, that's great. It's totally not necessary. But you know, something, like a drawing at least is awesome. Oh,

Samar Shah 5:02

yeah, that's a really good starting point. And kind of circling back to our earlier conversations, why I think it's really beneficial for clients to work with you, Jamie, is because you will tell them, hey, this is not really patentable yet, or I need more information about this. That seems like a very normal part of the patent practice. But it's surprising how many attorneys will just, you know, kind of hem and haw at, you know, what they need to get a good patent application done, mostly, I think, because big firm attorneys, and I used to be one never had to exercise that muscle, right. They always got patent disclosure material. And usually, the client was an in house patent counsel. So they were doing a lot of the filtering at the corporate level before he came to the law firm. But when individual inventors are working with attorneys, they need the attorney to do the filtering. So sometimes the big firm attorneys just don't have that experience or the background, to help you filter, which is an important kind of first maybe pre step to getting things done. But you're right, it is important to think about how you would make the invention. I always like to tell clients, the patent should be not about what it is, it's about how you're accomplishing those things. So focus on the how and less on the what or what the idea is a good patent attorney will help you or a good patent agent will help you figure out how to go from the how to give you maximum protection around the what. But it's always helpful, and I think important to start with the how and then work your way into the what?

The first step to getting a patent ⁠6:33⁠

Jamie Brophy 6:33

Yeah, definitely. And, you know, I think we get a lot of clients that tell us about all the benefits and advantages of their invention. And those are great, we definitely need that information. But what is more important than that is what are the physical characteristics of your invention that make it have those advantages, because you're getting a patent on, you know, the device itself. And you can say, you know, it's cheaper to make than what's already out there, or it's stronger, or, you know, it has, you know, all these different advantages. But we need to know, what are the physical features of your device that that give it those advantages? Because those are, those are what you're getting the patent on?

Samar Shah 7:19

Yeah, Jamie, I feel like clients are maybe sometimes apprehensive about giving us the specific details. What would you say, let's say I'm the inventor. And I'm worried that if I give you how I'm making my invention, that my patent is going to be pretty narrow. And it's going to be limited to that how and somebody else can just make my invention in a different way. What would you say to an inventor who's thinking along those lines?

Jamie Brophy 7:44

Yeah, that's a great point, you know, we do our best to think of different ways the invention can be changed that are still within the scope of the invention. And we try to write the applications as broadly as possible to cover all those different permutations that we think competitors might come up with. But you know, sometimes we can't think of everything. And we have to sometimes rely on the inventors to come up with some alternatives as well. But yeah, we try to write them as broadly as possible. And depending on the invention, you know, sometimes it has to be narrow. If it's a really crowded field, but we we definitely try our best to, to make it as broad as possible. And, you know, describe a bunch of different a bunch of different ways that it can be done within the application.

Conceptual framework for a patent application ⁠8:37⁠

Samar Shah 8:34

You probably heard me say this 1000 times Jamie. So I apologize, but I kind of think of every patent application as a Russian nesting doll. So if you've seen those things, dolls that they nest on top of each other, I think of each nesting as a layer of abstraction of the invention. So at the smallest layer, or the core layer is the invention that the inventor has come up with exactly how it works and how they made it, and how everything works together. But it is our job to expand beyond that. Right.

And I think that's where a good patent attorney or patent practitioner will earn their fees, is they'll say, Okay, well, now I have a core layer of invention, the way that the client has invented it, what can I remove from this thing to get a broader application done? I would want to see you remove components from it to make the invention broader. It's it's almost counterintuitive, right? Some people think that the more you put in there, the broader the invention is, but it's the opposite. And the reason it's the opposite is because that's how patent infringement works. So when you go to assert your patent in the courtroom, the judge or the jury or the litigants are going to look at the patent claim. And they're going to say do you practice all of the steps that are in your claims? So the fewer steps you have the broader the patent because the fewer things you add a map on to your competitor's product.

So you'd want to remove elements from the invention to make it broader. And I think that's like the second or the middle layer of abstraction of the invention. And then I think we should be saying how our competitor is going to knock off whatever is left, right? What are some competitive products that they're going to make, and then write up the patent application, essentially, again, and then the practitioner should come in. And they should say, Well, how can we abstract things out by using broader language or broader terminology. And we can expand things out further.

So by the time we're done with the application, I like to think that we have three or four layers of abstraction in there. And I think that's what makes a good patent application, because it's both broad and narrow, and somewhere in the middle, all at the same time. And I think a thing that practitioners don't always talk about very often is that you need all of those layers, if you're going to have a good outcome on the patent application. So you always want to proceed with your broadest invention, the broadest layer of that Russian nesting doll. And if we can get a patent on that scrape, you've got a really good outcome on your hand. But if you don't, if there is prior art that's out there, we can collapse the scope of the invention and maneuver around whatever prior art the patent office found. And I think that's really helpful to be able to expand and collapse the scope of invention as appropriate, because we don't know what the patent office is going to find on the other side.

The importance of clarity in a patent application. ⁠11:17⁠

Jamie Brophy 11:17

Yeah, definitely. Yeah, that's a good point. I also like to think about, okay, what aspects of this invention are essential? Like, what has to be in here? And what can we, you know, what, can we broaden out as far as possible? But yeah, I like your approach, I definitely try to follow that approach with each application I write. Yeah, that's, that's a good way to put it with the different layers.

Samar Shah 11:46

Jamie, what are some errors or mistakes? Or maybe opportunities left on the table that you see, when you maybe see some applications that could be improved? What do you typically see?

Jamie Brophy 11:59

Um, you know, sometimes I read through a patent application and still don't quite understand what, what the invention is, or how the different parts interact with each other. So, you know, I think it's important to be as clear as possible, I think it's important to make sure that everything that you stated in your claims is supported and described, adequately in the application itself. Yeah, I think just, you know, broadly, those are some of the things that I typically see how about you?

Samar Shah 12:39

Yeah, I would echo that I read that applications for a living. And I have a really hard time reading patent applications sometimes, just because it's so unclear, right? It could, it could cover like really anything, if you really stretched interpretation around that text. And I think that's where you do a really good job, Jamie, is you're very, very clear in your text about what the invention is. And some attorneys may kind of balk at that and say, Well, you shouldn't be as clear because you want to be as broad as possible. And I think they conflate breadth, with lack of clarity, right. And I think those are two separate things that inventors should be looking for when they are reviewing patent drafts from their attorneys being clear is important because it helps claim interpretation at the patent office, certainly, but also in litigation down the road, if things are unclear, you're not going to get good outcomes at the patent office, or you may not even get good outcomes at in litigation or in a in a federal court or in a in front of a patent judge in a in a IPR proceeding or something like that.

Clarity, I think is the most important underrated aspect of a good patent application. And this is why I like starting to kind of go back to our Russian nesting doll example. I like starting at the core specific level, because it helps you It forces you to be clear and precise about what the invention is. And then you can abstract out and remove things strategically to broaden the scope of the invention. What a lot of attorneys I think they do is they start super broad right as broad as possible, because they want to protect their clients rights, which is which is good, but maybe a little misinformed. And then they kind of narrow in theoretically, you should work the same way as expanding out from from something that's narrow. But in reality, it ends up being very messy and complicated, because you started very broad, it could cover anything under the sun. And now you're trying to squeeze out an interpretation and narrowing from there. So I always like starting with clarity and precision about what the invention is and then you can abstract out I think it improves clarity quite a bit.

Jamie Brophy 14:43

Yeah, I would definitely agree with that. And, you know, one other thing to think about is it's it's a requirement that you disclose the best mode of carrying out your invention. That's part of the deal with patents right you get in exchange for the right to protect your invention exclude As of right to making use your invention, you have to disclose it. So you have to disclose the best mode for carrying out your invention. You have to disclose it in a way that somebody that has ordinary skill in that industry can make it and use it. So those are kind of what you've described. Those are also kind of requirements of the patent application.

Writing to different audiences ⁠⁠15:27⁠

Samar Shah 15:27

Yeah, I agree. I mean, there's no more requirement to label it as best mode, but you still have to disclose it. You're right, Jamie. But if you have this framework that we have about starting with narrow and precision and accuracy, then you've kind of checked all the boxes off automatically. So I agree, that's a really important part of the patent document.

In my experience, as a patent litigator, I've done a lot of trial work, where we have presented evidence in front of jurors, and often patent trials are complex, there tend to be some of the most expensive patent litigation in the United States, which is already expensive to begin with. But in every trial that I have done, Jamie, I have presented over 300 pieces of documents as evidence in those trials. And the other side has also presented 300 pieces of documents. So there's like 600 pieces of documents, each may be anywhere from five to 1000 pages long, that the jury has to consider is very complicated. And the deliberations kind of go off the rails sometimes. And they're not allowed to bring any of these documents back to the deliberation room, except for one document, which is the pen document with the patent itself.

If that document is unclear, you're really losing the jurors of that point. They're confused about what the invention is they they don't know how to interpret that document, even if patent practitioners are able to so I think you need to be writing your background and summary sections to lay people, right people who are not patent practitioners.

So I like I like being able to talk to that audience. And when I write my background and summary sections, I always imagine talking to jurors in a deliberation room, and what would I want to tell them about the invention to leave a good first impression and the last impression and the last word on the topic. So I think about that when I write the claims, I'm usually thinking about what a judge may think about this and how they may interpret the invention.

And then when I'm writing the detailed description section, I'm thinking about what an expert witness, a lot of patent trials kind of come down to what an expert says that this invention means. So what is an expert witness going to take from my document and write their expert report on so I really think about different audiences for different sections of the patent application.

I think if you're writing to all of them at the same time, it's it's a missed opportunity, because you're not really talking to any of them. But being able to think about the end user who's going to read the document, and interact with it, I think is an important part of the drafting process as well.

Jamie Brophy 17:55

Yeah, that's a good point. In addition to that, you know, I also tried to take into consideration that the patent examiner is also our audience. And, you know, having been a patent examiner, I know, what they're looking for, and the things that are going to be important to the patent examiner. And, you know, also often our client is our audience, there's certain things that that they want to see in the application, there are certain things that, you know, if I think it's not going to affect patentability, and they want things worded a certain way, then I'm usually happy to do that. But yeah, there's a lot of lot of different things to take into consideration. But wow, being on a jury with 600 pieces of evidence, I'm like, falling asleep, just hearing about that.

How Inventors should review patent applications ⁠18:40⁠

Samar Shah 18:40

Yeah, and the jurors are also, you know, they're usually in a patent trial sequestered for three to four weeks, every trial that I've done has been at least four weeks long. They have other family things that they need to deal with. They're waiting to get out of there. And they are just inundated with evidence I can, I can appreciate the challenges from that perspective.

And I appreciate being able to work with you on patent applications, because you do have a really good filter for how an examiner may want to think about the patent application.

That's another important audience that we need to write towards. And in the other part of the client communication that you talked about, I think is so critical. A lot of attorneys will just kind of brush it off, right? It's like, oh, well, the client needs to understand how I wrote the patent application.

But here's the reality of it. And I don't care who the client is, if they're another patent attorney, or just a solo inventor. They have a hard time reading patent documents. And I know that because I have a hard time reading patent documents.

I think if you do a good job of explaining what the problem is that the client is trying to solve for, and do a good job of explaining how they solve the problem with the invention, then I think it helps the client kind of follow along in the patent document, and it allows them to review the document more Mostly, then if it was just a bunch of legalese that they can understand I can, I can appreciate.

I imagine that a lot of clients are getting patents to review. They're saying, I don't know what this says, But I trust my attorney, and I'm just gonna go off of that, which is not great, because I always want client input to make the patent document better. So if I can write it in a way that will help them follow along and help them hit milestones and key sections of the invention, that will make for a much better review process. And it will allow us to collect better feedback, which will make the patent document better at the end of the day.

Make sure the claims are right. ⁠20:34

Jamie Brophy 20:34

Yeah, I would agree with that. patent language is very difficult to get through and very difficult to read, you know, it's not written in a, it's just not written in a easy way to understand. But yeah, I try to make it especially you know, the detailed description section, I usually point that out to the clients, you know, at least make sure that you're reading this part and that everything makes sense. And that, you know, there's nothing missing, there's nothing incorrect. But yeah, because some of it, some of it does get a little difficult to wade through.

Samar Shah 21:11

Yeah, I mean, I personally think that having a collaborative process with your clients is going to lead to a better patent application. So you should be writing towards that goal in terms of improving that collaboration and getting better feedback. I think you do a really good job there. And I think, you know, if you're listening to this, and you're you received a patent document from your attorney, you don't really understand it, talk to them, call them up, talk to them, and work through that together. I think that's a really important piece of the process.

Jamie Brophy 21:37

Yeah, yeah, definitely. Good point. Don't be afraid to call us and ask questions.

Samar Shah 21:42

Yep. And then, Jamie, I'm just unpacking what you said, making sure the claims are right is the the last thing that you said, I think that's really important too.

One of the things that is my personal pet peeve is that attorneys will write a claim that they think is the broadest one that they can get. I know that's well intentioned, and you want to get the broadest patent possible. Often, that right up is just not strategic enough for my liking. What I like to think about is, okay, who's going to infringe this patent?

I like to start with a list of potential infringers who may want to get into this space or in this competitive product mix? And how are they going to make it what is going to be their go to market strategy, and how's that going to be different from what you have, I like to write my claims geared towards specific competitors. And sometimes we write them geared towards specific licensing partners, and sometimes geared towards specific acquisition, potential acquirers.

So I like to have details in my, in my mind, from a strategy perspective about how this patent is going to interact with a broader competitive landscape. When I'm writing those claims. I think it's not enough to just write towards the invention and not enough to just right towards making it broader or narrower. I think having a strategic perspective to the claims really improves the outcome that our clients are able to obtain with a bad application.

Jamie Brophy 23:03

Yeah, definitely. And also taking into consideration what the prior art is, if we have already done a search, or if the client is aware of any prior art, we need to make sure that we're avoiding that as well. But yeah, those are all all good things to take into account.

Samar Shah 23:21

Yeah, I think we did a good job there as well. Maybe we should save that for another podcast episode about prior art searches and how to interpret those and how to use those to inform your decision making process. But yeah, so let's save that. But Jamie, is there anything else from a big picture perspective on a patent application that you you think the listeners should think about or be aware of?

Jamie Brophy 23:43

I can't think of anything else. I think we did a pretty good job of covering everything. What do you think?

Samar Shah 23:48

Yeah, I hope so. I don't know if it was as clear to our listeners as it was to me, but I think I think you certainly did a very good job. And I hopefully I didn't confuse people too much in this process. But yeah, I think I think it's important to talk about big picture patents stuff. I just don't see a lot of discussion of that. I see a lot of discussion about different aspects or details about the patent process, but but nothing that's big picture and strategic and thoughtful. So I think this was a really fun conversation, Jamie.

Jamie Brophy 24:18

Yeah, I think so too. I'm looking forward to our next ones.

Samar Shah 24:22

Yeah, me too. Thanks for everyone for tuning in. Hope you subscribe to the podcast. We'll see you on the next episode. Thanks, Samar. Thanks, Jamie.

Thank you for joining us on the patent pending made simple podcast. I hope you enjoyed our show. If you'd like to receive updates, view the show notes or access a direct link to any resource. Go to the episodes page on patent pending made simple.com. To help others find our podcast. Please like share and subscribe. Thanks again for tuning in. I look forward to having you with us next time on patent Pending Made Simple.

Disclaimer:

This podcast has been hosted By Outlier Patent Attorneys and is not intended to, nor does it create the attorney client privilege between our hosts, guests or any listener for any reason. The content of this podcast should not be interpreted as legal advice. All thoughts and opinions expressed herein are only those from which they came.