“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 inventioan 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.”
Topliff v. Topliff, 145 U.S. 156, US Supreme Court (1892)
The Court's observation remains as true today as it was 120 years ago: patent drafting remains deceptively difficult.
Good patent drafting requires one eye on the past and one eye on the future. How will my claims fare against prior art, including my own? How will an Examiner, or a judge or a jury, parse the language of my claims? If my claims are allowed, will my competitors be able to design around these claims, and if so, at what cost? Are there alternate solutions to my problem that haven't been considered? Are there data that can be developed to support and strengthen my application before it is filed?
These are the kinds of questions we consider with our clients in drafting patent applications.
Representation Before the USPTO
In applications we’ve written
In order to ensure better communication between the applicant and the USPTO, more compact prosecution, and cost efficiency, and in contrast to the common practice in Israel of using a US-based associate, we ourselves engage in patent prosecution before the USPTO for the applications we’ve written.
In applications written by other Israel firms
Fourth Dimension IP offers Israelis direct access to experienced-USPTO practitioners, in Hebrew and in Israel. We have extensive experience filing US national phase applications of PCT applications written by others. When appropriate, we prepare and file follow-on applications within the one-year grace period afforded by US law.
In applications originating in Europe and the Far East
As a smaller firm of Ivy-league educated US practitioners, we are in a position to provide your case the attention and intellectual fire-power it deserves. And we do so at a highly competitive cost in comparison to US-based firms.
Representation Before the Israel PTO
The Israel PTO has in recent years demonstrated a surprising degree of seriousness for a small country PTO, reflected in part by almost monthly announcements of changes in policies and examination guidelines. We treat IP protection in Israel no less seriously for clients for whom such protection is important.
Freedom to Operate & Due Diligence
We have extensive experience performing freedom to operate analyses and due diligence-related work for inventors, start-ups, and investors, in contexts such as strategic investment negotiations and public share offerings.
Patent Litigation Support
We leverage our technical expertise and sensitivity to often-contradictory case-law to assist
clients in the context of litigation, whether enforcement or defense.
As a low-cost alternative or adjunct to patent protection, reliance on registered designs is on the upswing. We help our clients identify aspects of their IP portfolio that may be susceptible to design protection and obtain such protection in appropriate circumstances.
photo credits: schematic-JonDigital@flickr | cells-kaibara87@flickr