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Patenting is all about communication, written by Jukka Korhonen
Patent claims may not be the first things that come to mind when you think about the basics of good communication. They can be wordy and loaded with definitions that seem out of place in everyday language. And it’s doubtful that the inventor is impressed by brilliantly written text if he or she cannot even recognize his or her invention in the patent application.
Lack of clarity, abundance of jargon or poor readability is not the goal of patent texts either. In fact, there is no reason why one should not strive for good and clear descriptions. However, due to the very nature of patents, which is to confer rights, the language and expressions used to describe a new solution in applications and patents are special, to say the least. It is perhaps not surprising that, due to the linguistic features peculiar to patent language, an application or patent drafted by a patent attorney is most likely best understood by another patent attorney or a person with some knowledge of patenting. On the other hand, a number of application procedures form an endless jungle of rules of such detail that even patent attorneys have to study them throughout their careers.
Not all companies that want to register patents can afford to build their own patent organization or have in-house patent expertise. As it is, the special nature of patent language and processes poses some challenges for the cooperation between a patent attorney and his or her client. As applications and patents, or even the relevant international patent law texts, do not provide descriptions of what is being protected and how the process will proceed in a common language, easily understood by both parties, how can the parties be in agreement that the invention is the precise one the inventor and the applicant had in mind? Or that even after modifications made during the prosecution of the patent application, the scope of protection will still suit the applicant’s products? Or that the most efficient alternative in terms of the applicant’s business will be chosen at each stage of the application process? This can only be achieved through sufficient and effective communication between the attorney and the applicant.
In the worst case, insufficient communication may lead to a situation where the applicant finds out years later that the patent protection does not cover what the applicant had thought it would. Or, having planned to expand his or her business to a specific country, the applicant finds out that it is no longer possible to obtain patent protection there. If this comes out at a point where the applicant, having spent years paying for application procedure costs and patent maintenance fees, would finally like to use his or her exclusive right to prevent a competitor from exploiting the invention, the applicant’s confidence in the entire patent system is likely to be at stake.
Who then is responsible for the communication to sort things out? Isn’t it first and foremost the expert party providing services in a special field?
Of course, the client must also take some responsibility. It is the inventor’s and the applicant’s duty to communicate to the attorney any information about the invention that is required for drafting and prosecution of the application. For example, information on how the invention can be realized in different products, what kinds of solutions are known to be used by competitors, and where on a global scale the invention will be used for business purposes. It is easy to ruin the possibilities for protecting an invention early on by, for instance, not telling about a known solution that is closely related to the invention. That very solution could prevent the grant of the patent, a situation that could be avoided by defining the invention just slightly differently, taking the competing solution into account. The applicant might also want to withhold a core detail of the invention to prevent the competitors from exploiting the invention based on the application or the patent. In this case, the grant of the patent will be refused due to lack of sufficient disclosure of the invention.
But even when it comes to the information held by the client, the patent attorney’s role is critical. It is part of the attorney’s expertise to ask the right questions at the right time and to explain the importance of the questions and the choices that need to be made. Even first-rate knowledge of patent laws as well as details of the patenting processes and technical areas will not make a patent attorney the top of his or her field, if he or she is not willing and able to ensure sufficient and effective communication with the client. On the contrary, it is the very communication between the patent attorney and the applicant or the inventor, having only limited knowledge in patenting, that is the real measure of the quality and value of the patent attorney’s work for the client.
Jukka Korhonen, European Patent Attorney, 23.9.2014