Chemistry Expert Witness On Patents Part 4

Chemistry expert witness Edward Funk, Ph. D., presented this short course to senior level chemical engineers on patents:

Now, a few things that should not be in the MOI.
First, the potential inventor should not express legal opinions concerning the potential invention. Attorneys are superb at sternly warning that such opinions can come back to haunt the inventor at a deposition or, more traumatically, on the witness stand.
Second, the MOI sho uld be written in technical language and not sprinkled with legal language. The MOI should be written as a clear technical paper.
Third, the MOI should not contain proposed claims. Many inventors with some track record have a tendency to do this. They kno w the difference between “comprise” and “consist” and have some ideas concerning multiple dependent claims. In my opinion, it very much annoys the patent attorney to see proposed claims.. This is his area of expertise. You don’t write the prescriptions at the doctor’s office.