Better Patent Drafting Starts With this Tool

June 23, 2015 LexisNexis IP Solutions

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When is a cell phone not a cell phone?

When it is an English “mobile phone,” a French“le téléphone portable,” a Turkish “cep telefonu pocket phone” or even an Israeli “Pelephone” (wonder phone).

In the world of patent claim drafting, knowing this information could mean the difference between overcoming an examiner’s rejection or withstanding a post-grant challenge.

Language is the patent practitioner’s primary weapon, and a patent drafter’s skill at choosing the right words—and leaving out the “wrong” ones—will affect how the resulting claim is received by the patent examiner. In few other industries does the phrase “choose your words carefully” ring as true as it does in patent claim construction.

On every patent application, the drafter faces a challenge. To maximize the IP value of an invention, the patent application’s claims must be drafted as broadly as possible. Drafting claims more narrowly may speed the patent prosecution process and increase the likelihood of being issued a patent, but that can come at the cost of leaving potentially valuable IP up for grabs by a competitor. Conversely, drafting the claims too broadly increases the chances that the claimed invention will run afoul of prior art.

One tool that can make this balancing act easier to navigate is a patent drafting thesaurus specifically created to assist in claim construction. Much like a traditional thesaurus lists synonyms for common words, a patent thesaurus lists terms, phrases and abbreviations that appear in published patent records. An effective patent thesaurus tool can help a drafter choose variations of words to describe the claimed invention broadly enough to protect as much intellectual property as possible while still describing it as precisely as possible.

In today’s global intellectual property arena, that patent drafter’s language toolbox needs to include more than just the terms and definitions pulled from records of the USPTO. An effective patent thesaurus should include language included in the records of the European Patent Office (EPO) and the World Intellectual Property Organization (WIPO). Patent practitioners can then type in a term and the patent thesaurus will display other terms that have been used as synonyms in all three leading global patent authorities.

Access to a deep database of already accepted patent claim terms helps practitioners save time when drafting, create sound claims and increase the odds of success in patent prosecution and litigation.

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