Once the process is underway, most of the initial discussions between the professional and the inventor focus on ensuring that the specification accurately describes the invention. After the first office action has been received from the Patent Office, discussions usually concentrate on resolving prior art issues raised by the patent examiner. Many inventors leave the initial drafting of claims, and claim revisions made during the application process, up to their counsel. This can be an expensive mistake. The value of a patent depends upon the scope of the patent claims, and the inventor is in the best position to appreciate the effect of narrowing the scope of claims sought during the application process.

Over the past fifteen years, Enpat has evaluated hundreds of submissions from inventors who believe their patent is infringed. The first thing we look at is the broadest patent claim. (We do this before even glancing at the abstract or drawings, description of the invention.) Then we compare the claim to the alleged infringement. All too often the claim contains at least one limitation not present in the accused device. When we point this out, even savvy inventors are doubtful that their patent doesn’t cover the accused device because “That’s exactly what I invented.” Unfortunately, it’s not what they patented.