May 14, 2019
European Patent Attorney Kati Leinonen puts good research and development and high-quality patent writing at the centre of patenting. When she translates inventors’ ideas and solutions into legal language, she bears the responsibility for the patent applications generating return on investment for business: patents that can withstand the test of time.
How can I draft a patent application so that it can later on bring money to my customer instead of just taking it?
These considerations are at the core of my work.
More than ten years as a patent engineer and patent attorney, first in industry and now at Kolster, have trained me to critically evaluate patent applications and the quality of patents throughout their life cycle.
During my career, I have concretely seen that a bad patent application can be just a waste of money and useless expenditure in research and development even if the actual underlying invention is good. However, no patents relevant to business come about without good research and development. The guiding light in my work is that patents are tools through which I can support and add value to companies’ r&d activities. This requires that the patent application process is handled with high quality and as good research and development deserve.
Writing a good patent application is balancing and mulling over various scenarios. My biggest realisation as a patent attorney has been that the way of writing is extremely important. When preparing an application, I have to consider many different types of readership. The text must be relevant at this moment, but also in 20 years’ time. It must be solid and convincing when read by a court judge, a patent office examiner who knows the top inventions in the technology sector, or a competitor of the company. It must withstand the test of time and changing markets.
The patent must not leave room for interpretation but, on the other hand, the scope of protection must be as broad as possible. It must simultaneously close doors for competitors and leave them ajar for further development. Today’s solution looks like this, but what will it look like in five years – will the patent still be relevant then, was the scope of protection left too narrow? Is it easy for a competitor to circumvent the patent? Forethought is an essential part of good patent writing.
Patenting is navigating through the choppy waters between different viewpoints. That is why good patent applications are not created by just throwing something together. Patenting has many moving parts, and the customer makes significant investments in the protection. I assume responsibility for it by asking the inventors questions they may not have thought about. In my career, I have seen many times that bad forethought is what produces short-lived and worthless patents.
A typical situation is one where the right to prohibit that the patent brings against competitors is based on an expression that is too narrow or restricts the protection. For example, if it is written in the patent claims that define the scope of protection that a certain function is only performed by pressing a certain physical button − what value does the product or patent have when, after a few years, the same function can be performed by a voice command or finger swipe? When writing a patent application, you must also anticipate all conceivable alternative solutions and the direction that the technology is going to take. The patent claims must be written so that the patent retains its scope of protection for as long as possible. Circumventing the patent must be made difficult for competitors.
A topical example is the patent dispute between Apple and Qualcomm. Qualcomm managed to obtain a sales ban on Apple products for infringing its patent. However, Apple is continuing its sales because it made a software update and the situation was fresh again as Apple claimed that it was no longer in violation of the other’s patent. What good did quarrelling do if the patent was too easy to circumvent? This is the core question in patenting: what is worth developing and protecting. A good patent attorney also helps to determine which inventions are worth the IP investments.
A strong patent portfolio and good product development are reflected in the value of the company. It brings the ability to not only license and get good partnerships, but also quarrel a little, if necessary.
When I started with patenting, I thought I knew English very well. When reading patent publications, I began to doubt if I did. Patent language is so different from any other text. It felt like I needed an interpreter: what on earth does this mean? The issue is not made any easier by the fact that the product development perspective and the protection perspective are quite far apart from each other, even though one does not exist without the other. Reading and interpreting patents is extremely difficult even for engineers unless you are a patent professional. Now I can act as a patent interpreter for my customers.
On the other hand, patent language is the most fascinating part of this work with its challenges: how do you describe a technical solution with legal text so that you can protect it as well as possible? Despite its technical nature, a patent is a legal document that describes what you own. And when you own the technology, you can also control its use.
An American colleague once said it aptly: “Ultimately, a patent is a letter to the judge”, and the judge must be able to render a judgement based on it. How do you describe the thoughts of an engineer in a way that is also understandable to a judge resolving a patent dispute years from now?
For a patent attorney, it is always an eye-opening experience when a patent application you have prepared is challenged and your text is torn apart word for word, looking for weaknesses. Will the patent endure attacks from a competitor and hold up in court? Have you been the party ripping open others’ patent applications? In my opinion, the depth of professional competence is well-illustrated by whether a patent attorney has this experience or not.
I have been lucky in the fact that, already at the beginning of my career in industry, I gained the very experienced and qualified in-house British attorneys of my international unit as my instructors and trainers. They found even the slightest weaknesses in the applications I wrote. Gradually, I got involved in carrying out simulations for patent applications written by others: if we were to go to court with this patent now, which arguments would the opposing party latch on to? Simulations were carried out regularly and sometimes they led to the patent applications being waived due to the weaknesses found in them.
We also used the simulation method to look for the strongest patents with which we would really challenge competitors for patent infringement. That way, the company was able to engage in licensing business with the patents. I worked in close cooperation with licensing professionals. I have learned from more experienced attorneys how to do business with patents. In addition, the Brits have introduced a touch of ‘Oxfordism’ into my patent English.
I dreamed of a career as a pilot while still in upper secondary school, but to my dismay, my growth stopped before reaching the required height. In the matriculation examination, I wanted to avoid writing essays, so I invested in chemistry, physics and mathematics. At that time, I would not have guessed that writing and analysing patent texts would be at the core of my future profession. However, I think it is amazing every time I manage to create an expression, or find one written by someone else, that makes you think: that really glides nicely in the choppy waters of patenting!
I get a kick out of incisive expressions, a bit like when I am reading a good book that opens up a whole new way of thinking. I especially like books that involve different scenarios. I am also a master at considering everything that can go wrong. If I write like this, what can follow? Books are a pleasant hobby, but my real passion is seeing and understanding the world. I always get inspired by new perspectives on my trips: aha, so this is also how you can solve or think about this issue.
Back in the day, pilot dreams were replaced with studies in electronics and information technology. It was a good choice as, from one industry to the next, technology is increasingly being mixed with software, telecommunications technology and artificial intelligence due to digitalisation and IoT. Now I can bring my own experience of patenting in the ICT sector to traditional industry, too, because good opportunities are not to be missed, at least not because of poor patent writing.
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