The Role of an IP Attorney

Well, there certainly is a lot of back and forth with the patent office, dealing with examiners, sometimes by telephone, most of the time in writing, but the art of a patent application is the drafting of the claims, and this is so important, and I think that local inventors, small inventors don’t really understand the importance of it.

A claim has to be broad enough so that it’s not easily designed around by an infringer, but it has to be narrow enough so it doesn’t read on what people have done before. And walking this tightrope is extremely important. And we try to make clients understand that even after the claim is drafted, that we sit with them and we work on it.

And we want to make sure that there’s nothing in there that is not completely necessary. So as to make it easy for an infringer to design around it. And yet, of course, we have to have enough so that it overcomes the prior art. Hopefully, we’ve done a search, we know what the prior art is.