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[Agent_Smiley]

I've been a registered patent agent for over a year now and have had the opportunity to work under a couple different patent attorneys whose drafting styles are very different. It's difficult to say whose is best and while I've read many patents that seemed better-written than others, their true value doesn't become apparent until they are litigated.

Does anyone here recommend the styles of a particular practicioner whose work can be viewed, for example, in patents that have survived the test of fire?

[patent_type]

Nope, sorry.  

But I will recommend that you ask the attorneys with whom you are working *why* they do some of the things they do.  Your style will end up being a blend of the folks with whom you work and the applications/caselaw you read.  You can always read the claims of the patents in major law-setting litigation and see claims the courts say were done properly and the claims that were done improperly.

[DJoshEsq]

I agree with patent-type's answer.  Also remember that each invention is unique and may require a different styled patent application, e.g. electronic/computer patents typically require a different style than mechanical patents.  Even more specifically, you sometimes have no idea why an application was drafted a certian way - e.g. the client may know that the invention must be very narrow...so the application may be written very narrowly.  

Anyways, your style will develop with time - pay attention to court decisions, read as many patents as you can and as patent-type said ask why.  

[JimIvey]

Does anyone here recommend the styles of a particular practicioner whose work can be viewed, for example, in patents that have survived the test of fire?

I've had a litigator defending my work call it "a dream patent" and I've had a client referred to me by a litigator who attacked my work and deposed me.  In terms of litigation, that's the best I've done in a "test of fire" if that's what you're referring to.

Like I've said many times here, just because my name is on a patent doesn't mean I wrote it.  Similarly, just because my name isn't on a patent doesn't mean I didn't write it.  If you're curious, ask and I'll tell you.  Or, you can look up the application in public PAIR and see if I signed it.

Sorry, but I've been solo for so long that I can't really recommend anyone else to look up.

Regards.

[Agent_Smiley]

Thanks Jim. I've recently purchased a copy of the book Invention Analysis and Claim Drafting by Slusky. Great information. Wish I had the advantage of it when I was first starting out. He mentions many practicioners in there that he regards as great to learn from. Have you heard of the book? Read it yet?

[Bill Richards]

I've been practicing since 1999 and found Slusky's book very useful.

[Bill Guess]

To the original poster:

I wouldn't mentor under the practicioner that wrote:

5,571,418  

Bill

[PA]

To the original poster:

I wouldn't mentor under the practicioner that wrote:

5,571,418  

Bill

I admit I don't have the time right now to read the patent right now.  Can you tell me what's wrong with it?

[Bill Guess]

http://www.cafc.uscourts.gov/opinions/06-1432.pdf

Immunocept, LLC, et al. v. Fulbright & Jaworski, LLP

A legal malpractice case resulting from incompetent claim construction.

Patent claim contains "consisting" in the spot usually reserved for:  --comprising--.  rendering the patent useless.

In this case the inventors hire the defendants to draft, file and prosecute the application.  Then the inventors hire another patent lawyer to draft other applications downstream from the above patent, (probably got the second lawyer cheaper).  

Later the plaintiffs approach Johnson and Johnson to license the patents, only to find out that the original patent was worthless.

From the CAFC decision:

" During the course of due diligence, J&J’s patent attorneys discovered that the ’418 patent suffered from a fatal flaw,..."

J&J then broke off negotiations.  

The patent holder then sues for malpractice, though a little too late.  Maybe they'll sue the second lawyer for leaving out the worthlessness part about the first patent before he started ringing up all those hours relative to the children aps of the dead parent.

Here's Claim #1.



1. A method of treating a pathophysiological state caused by a toxic mediator-related disease
  consisting   of hemofiltering blood with a filter, wherein said filter has a molecular weight exclusion limit of 100,000 to 150,000 Daltons and allows for passage of molecules with a molecular weight of about 70,000 Daltons in the presence of whole blood.

[Agent_Smiley]

Ouch!! Thanks for the link. I guess it might be easier to show what NOT to do in prosecution haha.

[Bill Guess]

Agent Smiley you are correct.

If bad patent claims were scrutinized a tenth as much as collapsed bridges we'd probably see less of them.

Perhaps there should be an NTSB for claim construction disasters.

As with:  "NTSB investigators focusing on one of collapsed bridge's gusset plates. “The bearings are not allowing the structure to move linearly with changes in the ..........etc"

Bill

[Bill Richards]

If one wants to see patent claims scrutinized closely, review some of the litigation records.