Some inventors attempt to draft their own patent application. However, in my opinion, doing so is not advised. The reason is that many different legal principles must be applied when drafting the patent application. A self help book may be able to discuss these principles but inventors may not be able to assimilate these principles in their writing styles. Mistakes made during the drafting stage do not show up immediately. Rather, these mistakes may show up when investors are deciding to invest, alleged infringers are deciding how best to design around your patent and jurors are deciding whether to narrow the scope of your claims.
For example, one principle in drafting a patent application is that the claims must be commensurate in scope with the description of the invention made in the application. If the claims are too broad in light of the description or the description is too narrow in light of the claims, then the courts will invalidate the patent for failing to satisfy the “written description” requirement. This principle, among others, might be the subject of a section in a DIY patent drafting book but, in my opinion, are only assimilated into one’s writing style through many years of practice and mentoring by a more senior patent attorney. Accordingly, one should seek the advice of a competent patent attorney when protecting an invention through patents.
The following case illustrates one way in which an alleged infringer attempted to argue that the patent failed to satisfy the written description requirement but failed. You can appreciate the complexity of the written description requirement and how this and many other patent law principles may not be conducive to a short description in a DIY patent drafting self help book.
The patent at issue was directed to a sunglass lens that can be removeably attached to prescription glasses. The sunglass lens is attached to the prescription glasses by magnets. The prior art magnetically attached the sunglass lens by mounting corresponding magnets in the frame of the prescription glasses. Unfortunately, this set up weakened the frame of the prescription glass. Also, the sunglass lens tended to fall off of the prescription glasses. The patented invention solved these two problems (i.e., decreased strength and stable support) by embedding the magnets into projections formed in the prescription glasses and top mounting the sunglass lens on top of the magnetic projections.
Revolution built a similar device but attached the sunglass lens to the bottom of the magnetized projection. They attempted to argue that the claims were invalid for not being commensurate with the scope of the detail description. The specification discussed both the decreased strength and stable support problems and asserted that the invention solved these two problems. The claims were directed to only the decreased strength problem and not the stable support problem. Since the claims were broad enough to cover both top and bottom mounted sunglass lens, Revolution contended that the claims were not commensurate with the detailed description. The Court disagreed. It held that inventors can frame their claims to address one problem or several, and the written description requirement is satisfied as to each claim as long as the description conveys that the inventor was in possession of the invention recited in the claims. Revolution Eyewear, Inc. v. Aspex Eyewear, 90 USPQ 1733 (Fed. Cir. 2009).