In the application preparation stage, for example, one of the initial rules to follow, in addition to the aforenoted knowledge, accuracy, and thoroughness, is to never have any outstanding “red flags” in your application. By this is meant that you must explain everything completely and accurately. There is nothing left to be explained or that may possibly be questioned as to the operability of the disclosed invention. This will obviously carry over into the prosecution stage also. We once prepared a patent application for a client wherein the inventor himself was not quite sure why it was necessary to have a particular element included within the system, or more particularly why the element worked within the system as it did, but he knew it was definitely critical to the operation of the system. We discussed this at length with our advice being that we would definitely have to explain the criticality of this element within the overall system prior to the filing of the application. We finally determined why the element was in fact critically important, the inventor agreed, and we filed the application. During the prosecution, the examiner questioned the operability of the system with particular reference being made to the particularly noted element, we responded that its operation was fully explained within the specification, the examiner agreed, he allowed the application, and the patent issued.
In connection with the proper drafting of a patent application, most people believe that the claims are the most important part of a patent. This is true in part, and not true in part. The correct way of viewing a patent application or a patent is that going INTO the Patent Office, that is, when the application is first being filed, the most important part of the patent application is the disclosure which comprises the written specification, the drawings, and the original claims, however, coming OUT of the Patent Office, that is, when the patent is actually granted and issued, the most important part of the patent is the claims. There are several reasons for this:
1) firstly, you cannot claim anything that is not disclosed within the original specification, drawings, or original claims, therefore they should be as complete and accurate as possible because they will provide the basis for the claimed invention as ultimately allowed
2) secondly, the specification, in particular, must be as complete and accurate as possible in order to avoid possible rejections by the examiner as being indefinite, inoperable, or the like
3) thirdly, once the patent application is filed, the specification cannot be changed, except for obvious typographical mistakes or the like – any material additions, corrections, explanations, or the like, are not permitted as such is considered to be new matter; and
4) fourthly, the claims can be changed at any time during the prosecution, so therefore, the claims, while still being examined within the Patent Office are not critically important from the point of view that they can be changed and are not necessarily the finalized claims that will issue and that will define your protected invention.
During the prosecution of the patent application, we thoroughly review the prior art patents noted by the examiner, confer with the examiner so as to better obtain his perspective on the application invention as well as the prior art patents and how they are, or are not, particularly relevant to the claimed invention, and then present written arguments and/or amendments to the claims, as necessary, in order to secure allowance of the best/broadest claims possible.