35 Years of Lessons in a Patent Attorney’s Career

L. Jon Lindsay, Partner

October 27, 2026 

After 35 years as a patent attorney, I was asked to write about some lessons learned. Here are a few suggestions in no particular order.

For inventors and in-house patent managers:

You know your invention and technological field better than the outside patent attorney does. On the other hand, the patent attorney knows patent law and best patent practices better than you do. Therefore, it takes both of you to prepare a good patent application. Work closely together.

Never assume that the patent attorney described your invention correctly. I have had inventors defer to me with respect to what I wrote and assume that it was correct even though they did not fully understand the way I described it. This can happen because it is the patent attorney's job to expand upon your original description of your invention in an attempt to be more thorough or to present your invention in a better light, and in doing so your original meaning might be changed. Therefore, please read every word that the patent attorney wrote very carefully to make sure that it describes your invention correctly.  Technical accuracy is the priority.

Some parts of a patent application might be written in very formal, rigid language that can be difficult to parse. If you are uncertain what it says, ask the patent attorney to explain it. Don't approve it unless you are comfortable with it.

Your careful attention during the patent writing process often results in a faster issuance of the patent. And that translates to lower cost overall.

Please give the patent attorney plenty of time to prepare their work product. If the work is rushed in order to meet a deadline, it might not be the best quality. Therefore, contact the patent attorney early in your product development process.

Find a patent firm that emphasizes quality over billable hours. I've seen a lot of patent applications written by attorneys at firms where they had to meet minimum monthly billable hours. Many of those applications are unreadable and probably invalid. My wife has had to listen to me complaining many times about having to take over prosecution of patent applications written by other law firms where it was obvious that they emphasized quantity over quality.

For patent practitioners:

One of my earliest patent applications was reviewed by a more senior patent attorney. His first comment was that it was "surprisingly well written." Then he apologized for saying "surprisingly." I'm a little obsessive about the organization and readability of my patent applications. My wife would say, "a lot obsessive," but I know not to argue about that. So a lot of my suggestions here are about how to write a good patent application.

I've seen patents written in a stream-of-consciousness style that did not seem to have a plan. Their drafters introduced limitations as they went along and went down a rabbit hole with respect to some detail before they had properly set the stage for it. As a result, it was difficult to follow the train of thought, and some limitations were not properly described. I attribute this to not having a good systematic plan for presenting the disclosure. Therefore, develop a plan that presents every limitation at a very high level before digging into the details of each of those limitations. And then do the same thing at the next level of detail for each limitation. In this manner, you work with one limitation at a time and step through what the limitation is, what else it could be, what other limitations it is connected to, how it interacts with those other limitations, and what its function is. Then go to the next limitation and do it again, thereby making sure to fully cover each limitation.

Define each term in one place. I've seen a patent that described a term in two or more places using different language each time, thereby creating a potential conflict in definitions. Repetition is not necessarily bad, but if you present a definition for a term more than once and you change one of them, then you have to go back and change all of them to say exactly the same thing.

I once spent several hours with an examiner, across multiple interviews and multiple office actions, trying to find clear support for the claimed limitations. The application had been written (not by me) in a very haphazard manner, with terms defined in different, conflicting ways in different places. We were not able to cure the written description problems, and the applicant eventually abandoned the application.

At a bare minimum, everything that a client or inventor says about their invention must go into the patent application. I know an attorney who successfully brought a malpractice suit against a patent attorney who had left out an embodiment he considered insignificant. That embodiment turned out to be the one later practiced by the alleged infringer.

Write the application in terms of what the system does, not how the user uses it. I had to work with a patent application that was written (not by me) almost entirely in terms of how the user of the system interacted with it. As a result, I had to rewrite the claims in terms of what the system did in response to user inputs, which was only implied by how the user used the system. It took a lot of time, but the examiner eventually accepted it.

You never know where useful information is going to come from. I interviewed an examiner for a patent application on an invention for detecting whether a cow is in estrus (i.e., is fertile and ready for insemination). Forty years earlier, a friend had described to me the mating habits of cows and bulls. Thus, I was able to regale the examiner (and the client's representative) with the intricacies of bull/cow mating behaviors to explain why the cited prior art was not relevant to our client's invention. I thought I would never need that information, but I managed to use it to overcome the rejection.

You never know which invention is going to be important. The first patent application I wrote covered how to put a CRT (cathode ray tube) computer display into a low-power mode without completely turning it off. The patent issued, but it turned out to be invalid in light of a prior-art reference by IBM. That reference was a short article published in an IBM Technical Disclosure Bulletin, a publication IBM used for inventions it did not think were worth the expense of a patent application but did not want anyone else to be able to patent. The irony is that this invention formed the basis for every "green" CRT computer monitor produced before flat-panel displays became the norm. Our patent was invalid because IBM gave away an invention that eventually became extremely valuable.

The common thread

Looking back, nearly every lesson here comes down to the same few things: start early, work closely together, be thorough, and never trade quality for speed or billable hours. A well-organized, carefully reviewed application costs less to prosecute, holds up better under scrutiny, and protects the invention that actually matters, even when nobody knows yet which one that will be.

At MLO, that is how we approach every application. If you have an invention you want protected the right way the first time, or a portfolio you would like a fresh set of eyes on, we would love to talk. Contact us here.