workingonbeingbetter

As a patent attorney, I'd advise you to get a patent attorney instead of writing the patent application yourself. This is not because I want your business. Patents are unbelievably difficult to write and you can make errors that can invalidate the patent at almost every turn. I've been practicing for a few years now and still don't have it down entirely.

That being said, if you want a great book, look at Ronald Slusky's "Invention Analysis and Claiming: A Patent Lawyer's Guide." It's probably the best book you can get to learn how to draft a patent, but it does not cover everything.

Here is the book.

First off, I would like to say thank you guys. As a lawyer myself, I think this is one of the most righteous causes to fight for at the moment, and if you guys would ever like assistance from a lawyer who has a background in electrical engineering, has done legal work for telecommunications companies, and has a strong understanding of con law, please let me know and I'd be happy to help out.

Second, I know that you responded to a follow-up question below, but I have a more nuanced question that I'd like to ask. You say that the FCC failed to properly follow the APA. What sections and/or clauses of the APA are you asserting that they failed to follow? More specifically, can you tell me what legal arguments you would make in response to this comment by /u/InquisitorialRetinue posted here and reproduced below.

Based on what procedural mandate, and on what theory? The AGs can’t even cite the APA correctly (“Procedure” is not plural). How is this different from interest groups urging the writing of form letters to an agency making identical points, most of which are disregarded by agency staff anyway? (The agency need only consider a significant point, not its redundant iterations.)

For one, it’s not a popularity contest. See, e.g., U.S. Cellular Corp. v. FCC, 254 F.3d 78, 87 (D.C. Cir. 2001) (an agency “has no obligation to take the approach advocated by the largest number of commenters” and “may adopt a course endorsed by no commenter.”). For two, the APA “has never been interpreted to require the agency to respond to every comment, or to analyse every issue or alternative raised by the comments, no matter how insubstantial.” Thompson v. Clark, 741 F.2d 401, 408 (D.C. Cir. 1984); see also Vermont Yankee (“administrative proceedings should not be a game or a forum to engage in unjustified obstructionism by making cryptic and obscure reference to matters that ‘ought to be’ considered and then, after failing to do more to bring the matter to the agency’s attention, seeking to have that agency determination vacated on the ground that the agency failed to consider matters ‘forcefully presented.’”).

Here, the AGs point to comment spam, but then don’t elaborate on how they are material to the validity of the proposed rule. They don’t even articulate a theory! Sure sounds to me like cryptic obstruction of the Vermont Yankee variety.

While this comment is pointed at halting/pausing the vote on the repeal due to the allegedly fraudulent comments, the cited case law (as well as precedential case law such as Citizen's United) does make a compelling argument in favor of the FCC. And, as an engineer, given the standard of arbitrary and capricious, it seems like the FCC has provided enough information to jump that incredibly low hurdle. So while I think it's the wrong outcome, the law does seem to indicate that the FCC will win.

Long story short, I would like to know how you all are planning to respond to those rules and arguments and what other legal theories/arguments you are planning on posing.

Thanks!

I’m a lawyer. In most jurisdictions, you can generally consent to acts that would normally be considered a crime against you. For example, consensual sex and rape/sexual assault, assault and football, theft and simply giving your money to someone, etc. Please note how I said acts, as almost all of these crimes have elements of consent within them.

I don't know if there is one because they vary by level of experience. Even guys who have been doing this for decades make mistakes. I'll list a few things though. Here's a little background first.

A patent has several parts. Claims are the legal meets and bounds of the patent. The claims are the section that define what intellectual property is covered by your patent. Think of these like a description of a plot of land. The claims must find support in a section called the specification. The specification often includes a background, drawings, a brief description of the drawings, a summary, and a detailed description. There are many requirements for each of these things. Lastly, you need a title and an abstract.

Antecedent basis is an issue that occurs in the claims. Any time you introduce a noun, it has to be introduced using the word "a" or "an" or "one" or "at least one." You can't use "the" because the noun hasn't been introduced yet. However, once you introduce the noun you can only use "the" to introduce the noun (there are exceptions to this rule). For example, if I'm trying to claim a bicycle, I might say "A device comprising: a first wheel; a second wheel; a rail structure coupled to the first wheel and the second wheel." In this case, notice how I introduced each wheel with "a" before I called them "the." This is the antecedent basis requirement and it is pretty straightforward. Although after you write ten drafts of the claims and move the language around for 200 word claims, these issues can slip through the cracks.

Another issue states that the claims must be supported by a description in the specification. If I have something in my claims that is not in the specification, then I run into issues about enablement (i.e., teaching someone how to use the invention), and that can be grounds to invalidate a claim.

The biggest issues in my opinion come from drafting claims that are either too broad or too narrow. Everybody has this issue and there isn't a right or wrong answer. If I draft a bike claim that says "a device comprising: a first circular rail coupled to a second circular rail." then I'm covering an enormous amount of prior art (i.e., things that have already been invented or are in the public realm). That covers skateboards, cars, dental tools, etc. It provides no real coverage because it's so broad. Even if it makes it through the patent office and is granted as a patent, if that goes to litigation a jury has to read that patent and try to think of "a first circular rail" as a front wheel. It can become muddled and inaccurate and can end up doing to the opposite of what you hoped, which was to provide an enormous amount of coverage. If you go too narrow, people can work around your invention with ease. I dealt with a case once where the inventor wanted to call something a "soft top" rather than just a "top." There was no reason to call it soft because that wasn't the heart of the invention. If I was another company, I could use a "hard top" and that patent would likely have no power over me.

As I said, this is just scratching the surface of some very straightforward issues. There is far more that can go wrong at almost any point in the patent drafting lifecycle.

I can't speak to your situation without knowing more, but in cases like yours, it is often not worth it to apply for a patent because the patent isn't worth much without an arm for enforcement (i.e., you'd have to seek out and monitor groups who were using your patented subject matter and then negotiate licensing deals or file infringement suits). In industries like the gaming industry, where the environment is more inclusive, the benefits of a patent are very limited and often times negative.

However, trademarks and copyrights are valuable to protect both your brand and your work. With respect to what you said, the word used in practice is "self-executing," meaning that copyrights are copyrighted upon execution (i.e., they are copyrighted as soon as you write or produce them) and trademarks are trademarked once they are placed into commerce (i.e., when the game is sold). There is a bit more nuance, but that is generally accurate. The point of registering both is to enhance your record and to allow for greater damages in an infringement suit (amongst other things).

Anyway, seems like you're on the right track with most everything. I just wanted to include that follow-up so others could get a better understanding.

Source: I am a patent/IP attorney