A patent must include a complete written description of an invention and claims. The claims define the limits of the invention. The claims must not describe what is old and, if the patent is to be of any possible use, must cover all commercial embodiments of the invention. Unless you are blessed with the knowledge of the entire world and the ability to predict the future, you won’t know either what is old nor all possible embodiments of the invention.
A patent lawyer is trained to closely identify this unknown dividing line between what is old and what is new. The patent lawyer will invest at least some time in determining what is old. The amount of effort is a judgment call based on the knowledge of the inventor, the knowledge of the patent lawyer and the relative ease of finding relevant information. Spending more in a patentability search than the cost of a patent application may be a waste of resources.
The patent lawyer will also work with the inventor to generalize the invention and identify various possible embodiments of the invention. The patent lawyer will write a single claim that attempts to cover all the possible variants of an invention. For example, if an inventor invents triangles, the patent lawyer might help generalize the invention to squares and pentagons, then claim polygons. A claim may contain multiple elements. Each one of the elements may need generalization.
The value added of a patent lawyer is therefore helping to draft valid claims and claims that are not easily designed around.
Patent lawyers will also:
- Keep track of and warn of critical deadlines.
- Attend to the many technical requirements of a patent.
- Avoid wording in claims known to be improper.
- Guide inventors through the patent application process, from first filing to issuance and maintenance demands.
All of these things are important in having a valid patent, but the most difficult is correctly characterizing the invention. And that is what a patent lawyer is trained to do.