Deliberately Develop Your Practice Style

Initially the focus of a patent agent or trainee is on grasping the fundamentals of patent law and practice. As you settle into the role, however, there is an opportunity to deliberately develop a practice style of your own. I have found that a key aspect of this is to reflect on the practice styles of those with whom I have worked. The following are a few key lessons that have been modeled to me by formal or informal mentors.

Attention to Detail

One of my first mentors was fond of reminding those that he was mentoring that “attention to detail is the hallmark of the solicitor's practice.” It is easy enough to acknowledge the importance of attention to detail, but one of the most valuable lessons I learned was in observing him consistently and carefully reviewing documents. Not only documents prepared by new team members or documents that were unfamiliar to them, but, day in and day out, reviewing even documents prepared by experienced team members that he had worked with for years.

In the busy practice of law there is a temptation to rely on the experience of those under your supervision and waive documents through, a temptation even to sign documents and approve filings without really reviewing. This is particularly the case where those under your supervision have years of experience and have consistently delivered documents to you for review that do not require revision. However, a careful double check often reveals errors. Even experienced and diligent staff make mistakes or have an off day. Often, mistakes may result from a staff member not fully understanding a file the way it would be understood by someone who has overall responsibility.

Supervision or responsibility for a file involves more than just signing off on what others do. It can be tedious to review documents, but mistakes can lead to significant repercussions. Attention to detail is the hallmark of the solicitor’s practice.

Knowing your Client’s Portfolio

Working with another mentor taught me the importance of knowing a client’s history and taking the time to determine how current research and development fits in with their existing patent portfolio. Many clients have years of experience in generating inventive solutions to problems. As they are presented with new problems, they draw on this experience in developing new solutions. This allows them to be astonishingly responsive and inventive, quickly coming up with unexpected and insightful ways to address problems. However, it can also lead to areas of overlap with past innovations, many of which may be disclosed in previous patent applications.

This mentor was intimately familiar with a large portfolio for a client. As the portfolio expanded, the team working on it grew, new members joined, and other members left the team, but throughout it all this mentor took time to review draft applications, prepare claims, and ensure that he was familiar with what had been disclosed and claimed and how that related to the client’s past and present work.

A familiarity with their past activity and their existing patent portfolio allowed this mentor to advise regarding which developments are new and which developments were previously disclosed. New developments could be the subject of new patent applications. However, the value of knowing the portfolio did not stop there. Often, previously disclosed innovations could also be claimed, using continuation or divisional patent applications to cover inventions that may not have previously been recognized as inventions or may not have previously been recognized as valuable.

Knowing your client’s portfolio and considering how their current research and development activities fit into that portfolio adds a significant layer of value for the client. This can often identify much more potential patent protection than is initially apparent.

Avoiding a Light Touch

Another mentor provided a particularly good example of a passion for understanding client technology. He was keen to obtain a sample or a video of the product in operation, if possible, and did not hesitate to request additional drawings or explanations if there was any question about how something worked. Many products, particularly in the mechanical field, can easily be described superficially. However, the important features are generally somewhat buried in the product. He taught the importance of taking time to engage with the client and the technology and warned that practitioners who adopt a ‘light touch’ approach often miss important features and end up focusing only on superficial aspects.

The importance of knowing the technology before drafting a patent application was particularly driven home to me when I came across an abandoned application for a lock assembly. The description referred to prior art and suggested that the way the components within the housing of the assembly interacted was what differentiated it. However, while the application included a couple of cross sections of the housing, the description was little more than a list of components and reference characters, with no discussion of their importance or how they differed from corresponding components that were well known in the field. The cross sections also did not show all connections between components or how components moved from one configuration of the assembly to another. The application had been abandoned following an office action in which the claims were rejected as either being anticipated by the prior art or inadequately supported by the description. It appeared that the applicant had been in the difficult position of being unable to amend their claims to point out the difference between their technology and the prior art because that difference was not described or shown.

There is often a pressure to adopt a ‘light touch’ approach for cost or timing reasons, such as by relying exclusively on the drawings and description of an initial client disclosure and preparing claims that are little more than a verbal picture. However, an initial disclosure often needs to be augmented, and if a verbal picture is all that is needed a client may be better served by seeking an industrial design registration.

Conclusion

The practice of patent law is more like a marathon than a sprint. At different times, one is ready to learn different lessons. As your practice develops, it is important to take time to reflect so that you can work on deliberately developing a practice style that you are comfortable with.