Resist Dumbing-down Your Invention

In Topliff v. Topliff, 145 U.S. 156 (1892), the Supreme Court stated:

The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy, and in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.

Seventy-one years later in Sperry v. Florida, 373 U.S. 379 (1963), the Supreme court stated:

We do not question the determination that, under Florida law, the preparation and prosecution of patent applications for others constitutes the practice of law. Greenough v. Tax Assessors, 331 U. S. 486; Murdock v. Memphis, 20 Wall. 590. Such conduct inevitably requires the practitioner to consider and advise his clients as to the patentability of their inventions under the statutory criteria, 35 U.S.C. §§ 101-103, 161, 171, as well as to consider the advisability of relying upon alternative forms of protection which may be available under statute law. It also involves his participation in the drafting of the specification and claims of the patent application, 35 U.S.C. § 112, which this Court long ago noted “constitute[s] one of the most difficult legal instruments to draw with accuracy,” Topliff v. Topliff, 145 U. S. 156, 145 U. S. 171. And, upon rejection of the application, the practitioner may also assist in the preparation of amendments, 37 CFR §§ 1.117-1.126, which frequently requires written argument to establish the patentability of the claimed invention under the applicable rules of law and in light of the prior art. 37 CFR § 1.119.

Patent application preparation and prosecution requires thoughtfulness, counseling, and strategy from an experienced patent attorney/agent who holds a federal license to practice before the United States Patent and Trademark Office.  However, inventors often mistakenly place their valuable inventions in the hands of unlicensed and inexperienced individuals and/or organizations marked as low-cost alternatives.  However, according to the Supreme Court in Topliff “the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.”  Id.  Although inexperienced and unlicensed practitioners are often less costly than experienced and licensed patent practitioners, the cost savings often come at the high price of poor patent protection, or no patent protection at all.