Among other defenses, an accused patent infringer may argue that their actions do not infringe any claim of the asserted patent or that the claims of the patent are invalid. A claim of a patent can be shown to be invalid, in addition to other ways, if the claim is excessively broad and “reads on the prior art”. On the other hand, the claim must have sufficient breadth to cover the alleged infringing activity in order for the claim to be infringed. At the time a patent claim is drafted, however, the patent attorney may not be aware of all of the relevant prior art and typically will not be able to consider the specific alleged infringing activity since it will likely occur after the patent has issued. The patent claims, therefore, must be carefully drafted to adequately cover the invention without being too broad without having access to the information that will be available during litigation or licensing negotiations. The likelihood that the patent attorney will draft claims that capture the appropriate scope of the invention increases with the patent attorney’s understanding of the underlying technology and the level of experience in the relevant industry.

The patent attorney with the strong technical background may better assist the inventor in realizing the full scope of the invention to which the inventor is entitled. Innovative concepts are frequently developed to solve a focused problem within a particular field. The invention as defined by the patent claims, however, can often be drafted to protect more than that particular embodiment. The technically solid patent attorney can engage the inventor in a process leading to an understanding of how the innovative concept may be implemented in other embodiments and or even in other technology areas. In addition, it is often advantageous to draft claims directed to focused embodiments that competitors are likely to pursue. A patent attorney having extensive experience in design and engineering can more productively collaborate with the inventor to predict industry trends and can draft focused claims that protect embodiments likely to be implemented in the future.