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Re: Re: Patent law career questions


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Posted by exp patent guy on December 05, 2003 at 06:13:41:

In Reply to: Re: Patent law career questions posted by Larry Kasoff on November 29, 2003 at 17:20:17:

Get some hard core engineering experience by first working for at least two top high tech companies.

There are far too many patent attorneys that have only rudimentary understanding of engineering. They get an undergrad in engineering and simply go right into law with only token, or no actual engineering experience. That is precisely the reason many Law firms hire "technical specialists"....because of the minimal understanding of engineering by many of the attorneys( this helps prevent malpractice lawsuits). You must first develop the [engineering] creative being in you before you can best serve your client.

In order to construct the strongest claims, e.g. one which is not easily designed around, one must be technically competant enough to not only COMPLETELY understand your clients invention, but must be able to see how others can creatively avoid the language you use in the claim. Only then can you construct a claim that encompasses all the embodiments. If all you do is write picture claims, you are exposed.

Many attorneys, who may lack sound engineering understanding and creativity, simply word claims so that no one can comphrehend the claim (often juries are composed of non-technical people, housewives, bachhoe operators etc.). This technique has been succesfull in the past.

A recent past issue of "Intellectual Property Today" contained a claim for a mere golf glove that is quite cryptic, the reason for, I do not know. I suspect it was to avoid a crowded technology field and to use terms that have never been used in conjunction with a golf glove in order to "distinguish" over prior art. But understand what enabled this particular attorney to accomplish his goal: he COMPLETELY understood the tecnical aspects of the glove! His overwhelming command of the technical jargon, some of which is extracted from the medical field, was also quite helpfull.

Most patents are worthless, many for these very reasons.


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