Patenthink

Okay. You’ve settled on your notion of the BIG idea for the bicycle that the inventor showed you. Let’s say that, roughly speaking, it’s “a conveyance that has at least one wheel and a place for a rider.” Some phrasing of this idea is going to be put in several places in the patent that you are writing. We’ll point the places out later, but for now let’s focus on exactly what words you will use and in what order to phrase this BIG idea. How well the patent will protect the BIG idea depends a lot on your care in doing this job.

In addition to its main purpose of protecting the BIG idea in its full glory, including every possible REAL example of the BIG idea, your word sketch of the BIG idea ought to be easy to follow, fun to read (at least as fun to read as something this un-fun to read can be), clear, accurate, precise, and concise (no, those are not all the same thing). Before we get to the central task, let’s talk about the niceties of the English that you use. These notions about style will be useful for all of the writing you do for the patent, not only for the BIG idea.

Above all, make your writing easy to follow and inviting. In the lingo that you piece together to frame the BIG idea, you have choices. One involves stiltedness. Will you pick common English words as your tools? Or technical jargon? Technical jargon and coined phrases (phrases like “unitary wheel-holding structure”) not only can cause trouble later, but they also make it harder for the reader to grasp your meaning. On the other hand, if you go the normal English route, will you aim for high-brow prose or morning newspaper style or something in between? And can you pick words that are clever and striking and put them together in interesting ways?

Technical jargon and coined phrases delivered in a high-brow boring style may lead you this way on the BIG bicycle idea “An apparatus that can convey an itinerant human from an initial situs to a terminal situs and that encompasses at least one rotating ground-engaging device mounted on a structural framework and a traveler support mounted on the structural framework.” Morning newspaper style can be different: “A gadget that can carry you from here to there and has at least one wheel and a seat both held on a frame.” I like that one better. It’s easier to read and paints a picture in my head. It uses plain English words in their usual way. And words like gadget are mildly amusing.

In the next lesson we will talk about the main job of your word sketch: protecting the BIG idea fully.

As a small diversion from the line of prior lessons, let’s talk about how the market context of the innovation you are trying to protect figures into your patent writing.

Market context matters. (If we ignore the trivially few people who get patents on principle, market context is the key to why people go after patents.) When products covered by a patent play prominently in a market, and there are no easy-to-substitute goods, the patent owner’s right to sue the players in that market makes the patent valuable.

Although you can craft a worthwhile patent that does not in words connect the invention to its economic value, you should at least consider whether and how to infuse market concepts into your work.

Recall that in writing the patent you will answer two central questions: what is the invention and how can it be realized.

The what is the thing that makes the invention new and different enough from what is publicly accessible to garner a patent and survive litigation over it. In writing about the what, your text should be technologically accurate (correct and unambiguous), express what makes it different broadly and clearly, and avoid common technical wording pitfalls. Beyond those basics, it can also be useful to tell the reader about the market context of the what–as long as you are careful how you say it and where you put it.

In writing about the market context, keep in mind that it is a different notion from the concept called, in patent lingo, the “field” of the invention. The field comes into play in testing whether an invention is entitled to a patent. The test—would the invention have been obvious at the time it was made—is applied from the view point of someone who had “ordinary skill” in that field at that time.

Patent writers often think of this “field” as a field of human endeavor, a field of research or engineering, such as computer science, or immunization, or nanotubes. The field of an invention may be communication networks. Yet the market context of that invention (and the interest of the investor in the business that wants to get the patent) may be the sale of Ethernet routers bundled with other Ethernet equipment to large corporate United States customers.

The next lesson will cover more on how and where to write about market context in the patent.