A Patent Drafting Checklist

Here are the chapter summaries for Rules of Patent Drafting: Guidelines from Federal Circuit Case Law. The summaries include 19 pop culture references, and the first ten persons to identify them by email ([email protected]) will receive fabulous prizes. You’re on the honor system to work from memory, not Google! To read other installments in the series please see Joseph Root on Patent Claim Drafting.

1. Drafting for Breadth

By employing the Drafting Rules set out above, the drafter expressly sets out the inventor’s intent for claim construction. Previously, a court could look at a single-embodiment specification and decide that the inventor really intended that embodiment to encompass the entire invention. If instead, that specification includes an additional paragraph, setting out several alternatives and variations, as well as expressly stating that the embodiment does not in fact encompass the entire invention, then courts are presented with exactly what they say they are seeking: the inventor’s intent. In Disclosure World, one gets what one discloses. To achieve a desired claim construction, disclose it. Complaining about Federal Circuit decisions accomplishes nothing, and whining does no good. Indeed, there is no crying in patent law.

2. Claiming for Breadth

One can sum up the general trend of Federal Circuit claim construction as a search for evidence that the inventor did not intend to claim as broadly as the claim language might suggest. In that search, lack of express support for claim language will be interpreted as a lack of desire to enforce the plain meaning of the claim. The techniques set out above offer the drafter a number of tools to demonstrate inventor intent, both explicitly and clearly. Of those, claim differentiation provides a powerful tool for showing that the inventor means exactly what the words say. Equipped with such weapons, a drafter can respond to a proposed narrow claim construction with, “Say ‘hello’ to my little friend.”

3. Prosecuting for Breadth

Achieving maximum supportable breadth during prosecution primarily consists in avoiding self-inflicted wounds. Gaining allowance usually entails narrowing claim scope, at least in distinguishing the prior art. In addition, the Doctrine of Equivalents can no longer be counted upon to enlarge claim scope, after the Festo decision. Although that case set out rebuttal factors, those factors have proved illusory. No matter how close one comes to establishing one of the stated exceptions, the court always comes up with some catch that restricts the patentee to literal infringement. It is almost as if the court were arguing that, yes, an amendment does not raise an estoppel if it is tangential; but if it were really tangential, the applicant would not have made it. That is some catch. The best there is.

4. Utility

Computer software applications in general and business method applications in particular need careful thought, fitting the application into the Bilski, Alice, and Mayo templates. Start by ensuring that no claim reads on a paper-and-pencil solution. Then, link the method to a machine, or to a transformation. The Supreme Court did reject that formulation as the sole test, but the plurality did endorse the test as a “clue” to patentability. The overwhelming odds are that any claim that meets the machine-or-transformation test will pass muster under § 101. Between trying to figure out what Mayo means, on one hand, and working out the contours of substantial and specific utility on the other, § 101 offers interesting prospects for the near future. If the recent past is any gauge, conditions are likely to get more confusing before they become clearer. Fasten your seatbelts. It’s going to be a bumpy night.

5. Written Description 

Any hopes that the written description requirement might be put back in its cage were dashed with the 2010 Ariad decision. To practitioners, the message was clear: Get over it. Apart from claim construction, written description has been the primary battlefield of the Disclosure Revolution. Both in biotech/pharma, with Eli Lilly and its progeny, and the mechanical and electrical fields, with Gentry Gallery and LizardTech, the “truism” that “the claims define the invention” has rung increasingly hollow. Between cases like Gentry Gallery on one hand and the Eli Lilly-Ariad line on the other, it is not surprising that many believe the written description requirement to be irreparably broken. But we can rebuild it. We have the technology.

6. Enablement 

Effective enablement requires careful effort. Information from both the inventors and others in the art must be assembled in a fashion that conveys the inventive concept fully and clearly. This task is made more difficult by the fact that it will not yield results for years after it is drafted. But the drafter should not be discouraged by that fact. Keep the inventor and his basic ideas in mind as you put the application together. If you build it, he will come.

7. Best Mode

As catastrophes go, avoiding best mode problems turns out to be much easier than, say, avoiding an asteroid strike, a fact that may explain the dearth of best mode movies. On the other hand, our objective is to avoid litigation by crafting ironclad patents, so that patent validity will not depend on the forbearance of judges and examiners. These Drafting Rules will ensure that drafters can fend for themselves; they will no longer have to depend on the kindness of strangers.

8. Preamble

Preambles are generally approached, if at all, without considering that a drafter can control whether or not that element will constitute a claim limitation. Bearing in mind that the preamble lies completely in the drafter’s control should allow one to consider the rules set out here and to construct a preamble that best fits the drafter’s goals for the claim. Like Dorothy and her ruby slippers, the first step is understanding that you possess something useful. Preambles can’t take you back to Kansas, but on the other hand you don’t have to go around muttering, “There’s no place like home.”

9. Transition

At the end of the day, the basic principles of transitions reduce to the simple statement, “Use ‘comprising’ whenever you can; where the invention does not allow additional elements, constituents, or components, use ‘consisting of’; if you really, really need to be in the middle, use ‘consisting essentially of’ and specifically describe the contours of how additional elements will affect the basic nature of the claimed invention.” Often, transitions seem completely ruled by conventional wisdom, and the adages about open versus closed claims sound like old wives tales. But, as Linus once observed to his sister Lucy, “Some of those old wives were pretty sharp.”

10. Claim Body

Drafters need to think both outside and inside the claims. Outside thinking aims to make the court’s task easier by providing claim terms amenable to straightforward, simple claim construction. Preferably, at least, the key terms are expressly defined, or at least explained through demonstration. Inside thinking takes up the question whether the claim construction supports the patentee’s or owner’s intention, as manifested in the claims and specification. By the time a drafter is “experienced,” she has been exposed to considerable instruction on claim drafting. Claim construction rules, claim drafting principles, claim drafting strategy—the endless seminar. Yet, the Federal Circuit regularly lectures the patent bar on its drafting practices. The difficulty is that among all of our construction rules and strategic principles, we have lost sight of clarity and precision. We need to refocus on basic principles. Indeed, we’re going to need a bigger boat.

11. Definiteness

Definiteness is a problem to be avoided, not solved. Because these problems occur in the claims themselves, correction can be out of reach, and the penalty is extreme. Application of the drafting rules will provide sure solutions in this area. Contextual ambiguity can be solved by defining terms, for example. Inherent ambiguity proves easier to see, as it stands in plain sight, with words like “about” and “substantial.” Again, definition solves problems, establishing the limits encompassed by otherwise ambiguous modifiers. Time is the drafter’s most precious resource, and spending any of it to define terms and root out errors of reference and grammar may seem profligate at the end of a long drafting process. Spending the extra hour now may make all the difference later. Consider what you will say after your patent is put to the test of litigation —will it be “King of the world!” or “I coulda been a contender.”

12. Means-Plus-Function Claims

If one can look at means-plus-function claims in an objective light, one can see a tool that offers distinct potential for enhancing a claim set. A properly constructed means-plus-function claim offers the possibility of expanded claim coverage, only requiring careful drafting of a broad disclosure (something that drafters should be striving to achieve in any event). Problems here are problems of description, not technology. When facing a means-plus-function issue, a drafter knows that what we have here is a failure to communicate.

13. Bars: Printed Publication

Fortunately, the time has passed when courts determined whether a given publication was or was not “printed” by applying technical line-drawing rules. The remaining question is whether the reference was exposed to a sufficient number of persons in the art to say that it had been circulated in a meaningful way. This change eases the burden on practitioners, as well as providing reasoned solutions to problems. The additional analysis does introduce a measure of doubt, as discussed above. Some commentators conclude that because one can arrive at such different results from similar facts, patent law is like a box of chocolates—you never know what you’re going to get.

14. Bars: Public Use

As every experienced patent lawyer knows, by far the biggest problem in the public use area is client education. Drafters usually learn about a public use after the fact, if not significantly after the fact. Three points of emphasis have proved successful in focusing client attention. The most important point is the loss of international rights. Many businesspeople, express shock when learning that international rights will be lost immediately upon public use. A second important point of client education is the subject of testing. Explaining what measures can be taken to ensure that experimental use is truly experimental can produce focused, valid testing. Finally, the importance of documentation cannot be overemphasized. The criteria for establishing experimental use are reasonably clear, but they must be documented. The analytical tools laid out above permit effective evaluation of and reaction to public use situations. Thus, when a client responds to your explanation of the public use doctrine by saying, “Surely you can’t be serious,” you can explain the law, and then add, “and stop calling me Shirley!”

15. Bars: On Sale

Compared with the public use bar, the on-sale bar offers similar but slightly different traps for the unwary. Here, the gating event is a commercial sale or offer for sale, gauged by a commercial law standard. As was the case in first-year Contracts exams, if the offeree can say, “I accept” and thereby create a contract, then an offer was made. The Pfaff test determines whether or not the bar exists, injecting commercial law into a patent setting. The resulting analytical complexity is somewhat offset by the practical nature of the commercial element. In a very real sense, a large part of the analysis resolves to, “Show me the money,” and then, “Follow the money.”

16. Inventorship

Problems of inventorship can be eliminated, or at least largely mitigated, but only if the practitioner takes effective preventive action at the time the patent application is prepared. Acting at that time, the practitioner can identify and document dates of conception and actual reduction to practice, as well as efforts demonstrating reasonable diligence in moving toward actual reduction to practice. Efforts to accomplish these tasks later are not only much more arduous and expensive, but they are also much less likely to succeed. Inventorship is the topic where the focus of patent law shifts from modern laboratories and high-tech corporate giants to individuals. We can lose sight of the fact that inventions are the product of human ingenuity, and behind each invention is a human story. In dealing with a joint inventorship issue, it doesn’t take much to see that the problems of three little people don’t amount to a hill of beans in this crazy world. But to those three people, the question may be the most important thing in their lives at that moment. That kind of problem deserves our full attention.

17. Inequitable Conduct

United States patent law does not require the applicant to perform any searching whatsoever. But, whatever the applicant does know must be shared with the PTO. This point has been made several times above, but it bears repeating: no patent has ever been invalidated because too much information was disclosed. At some point, however, a policy of complete disclosure may run up against a client intent on protecting secrets at all costs. Preparing for a range of eventualities, one must consider conflicting duties to the client and to the PTO. No rulebook can dictate one’s actions at that point, though forethought can show the way. That planning can prepare for the situation in which your demand, “I want the truth,” may be met with, “You can’t handle the truth.”


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Join the Discussion

2 comments so far.

  • [Avatar for Benny]
    October 9, 2014 03:24 am

    “… among all of our construction rules and strategic principles, we have lost sight of clarity and precision”

    Nice to know that patent attorneys are waking up to that one. People who actually read patents have known that for a long time.

  • [Avatar for Eric P. Mirabel]
    Eric P. Mirabel
    October 7, 2014 05:07 pm

    Patent practitioners: at this point in history, my movie analogy to where we are is Tony Montana in “Scarface” sitting in the hot tub with a cigar, and saying: “[The Supreme Court, i.e., nine of the smartest] lawyers are all trying to f__ me” (he actually says “lawyers and bankers”)