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Securing a patent can be tricky. The process is complex, and a single mistake can leave your client’s invention unprotected or entangled in legal disputes.
That’s why it’s critical to get it right the first time and ensure that every step of the patent process is airtight – legally, technically, and strategically. In this post, we discuss some common mistakes law firms make during the patent process – and more importantly, how to avoid them.
From failing to conduct a proper prior art search to overlooking critical patent drawings, we explore the areas where precision is key and where errors can cost your clients big.
1. Skipping the Patentability Check
This one’s a rookie mistake, but even seasoned professionals sometimes slip. Before investing time and resources in drafting a patent, you need to ensure that the invention is actually patentable. Sounds obvious, but some law firms skip the crucial steps of a thorough prior art search and patentability assessment (which often includes a patent search).
The difference between the two is important: a patent search helps uncover existing patents that might overlap with your client’s invention, while a patentability assessment digs deeper into whether the invention meets legal requirements for novelty and non-obviousness. If a similar patent already exists, your client’s application won’t stand a chance.
2. Inadequate Patent Drawings
Sloppy or missing patent drawings can sink an application. After all, patent drawings aren’t just a formality – they play a key role in explaining how the invention works, especially when it comes to complex machinery or technology.
In fact, drawings are often what make or break the clarity of your submission. The solution is to invest in high-quality, precise patent illustrations.
Make sure they’re detailed enough to leave no room for interpretation, but not so cluttered that they’re impossible to follow. If your law firm doesn’t have in-house technical illustrators, work with specialists who understand patent requirements and how to present the invention clearly.
3. Lack of Precision in Language
Vague or overly broad language in a patent application can lead to serious problems down the line. If the patent is too vague, it might not hold up under scrutiny in litigation. On the flip side, if it’s too specific, it might limit the scope of protection for the invention.
So, you need to strike a balance between protecting your client’s invention and ensuring the language can withstand future legal challenges.
This is where careful drafting comes in. Here, every word matters. For example, when describing an invention’s features, avoid relying on ambiguous terms like “may include” or “can be.” Instead, use more assertive language like “comprises” or “includes.” Don’t shy away from defining specific terms within the patent if there’s any risk of confusion.
4. Overlooking Potential Infringement Issues
A patent might get approved, but that doesn’t mean it’s free from future infringement disputes. Some law firms make the mistake of not fully considering potential infringers when drafting patent claims. If the claims are too narrow, competitors can easily design around them, but if they’re too broad, you risk invalidating the patent altogether.
A good strategy is to draft claims with potential competitors in mind. Ask yourself: how could someone work around this patent? What aspects of the invention should be emphasized to prevent others from benefiting from loopholes? It’s also wise to review patents from competing firms and industries to spot potential infringement risks before they become a problem.
5. Failing to Consider International Protection Early
This one’s more common than you’d think. Many law firms focus solely on securing a patent domestically, only to have clients later request protection in other markets. But by then, the window for international protection under the Patent Cooperation Treaty (PCT) might be closed, or the cost of retroactively securing patents in multiple countries can be astronomical.
The key here is to discuss international patent strategies upfront. Even if the client isn’t ready to file for international protection immediately, a strategy should be in place. Countries like China, Japan, and the European Union have their own patent regulations, and securing protection in those markets early on can save your client a lot of issues – and legal fees – later.
6. Mismanaging Patent Timelines
Patent timelines can be complicated: from provisional applications to non-provisional filings, to PCT deadlines, it’s easy to get lost in the shuffle. But missing a deadline can be disastrous, often resulting in the loss of patent rights altogether.
The solution? Meticulous docket management, which is only possible with advanced docketing software that tracks important deadlines for every case. You’ll want to automate alerts, and double-check with manual reviews.
Don’t rely on an old-school calendar or try to juggle timelines manually because this way, it’s only a matter of time before something slips through the cracks.
Source: Heer Law, Toronto, Canada
