Posts in Patent Drafting Basics

Background Pitfalls When Drafting a Patent Application

Generally speaking, the first section of a patent specification will be the Background. The Manual of Patent Examination and Procedure (MPEP) recommends that the Background be broken up into two sections: (1) Field of Use Statement; and (2) Background of the Prior Art. These sections are recommended, not mandatory. Indeed, the Background itself is recommended and not mandatory. If you are going to have a Background it needs to be short, sweet, completely self-serving, must never actually describe the invention and it cannot ever use the term “prior art.” One big mistake inexperienced patent practitioners and researchers tasked with creating a first draft will make is they will go on page after page in patent applications about the history of the invention and the prior art. Indeed, there are some popular books on the market that recommend that this material be filed in patent applications. Including that type of information in an application that is filed is simply inappropriate. You do not see the best lawyers at the best law firms who represent the largest patent acquiring companies write patents like that, so why should you?

Eight Tips to Get Your Patent Approved at the EPO

Patent prosecution can sometimes seem to be a rather byzantine process. As with anything, the more you understand, the better prepared you will be for the strategic decisions that lie ahead, some of which will result in a streamlined patent approval, but which will also raise the overall cost of obtaining the protection desired. In this regard the patent process is full of trade-offs. For many, getting a patent quickly is very important, as is the case with high-tech start-ups and SMEs seeking reputational advantages, additional funding, licensing opportunities and partnerships. With this in mind, here are eight helpful tips co-authored with the Morningside IP team and specifically aimed at those applicants filing at the European Patent Office (EPO) who are hoping to obtain a strategically reasonable set of patent claims with a streamlined patent application approval process. Of course, following these eight tips can and should also pay dividends with respect to getting your patent approved in other patent offices around the world.

What to Know About Drafting Patent Claims

In order to obtain exclusive rights on an invention, you must file for and obtain a patent. Many inventors will initially opt to file a provisional patent application to initiate the application process, which is a perfectly reasonable decision to make, and will result in a “patent pending” that can even result in a licensing deal. Ultimately, if a patent is desired, a nonprovisional patent application must be filed, and it is this nonprovisional patent application that will mature into an issued patent. U.S. patent laws require that the patent applicant particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information. Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the Patent Office has granted protection.

Beyond the Slice and Dice: Turning Your Idea into an Invention

The patent process actually starts well before you file a patent application or seek assistance from a patent attorney. Every patent application starts with an invention, and every invention starts with an idea. While ideas are not patentable, there will be a point in time when the idea you are working on comes so into focus  with enough detail that it will cross the idea / invention boundary.  It is when an idea matures to the point of being concrete and tangible enough to be described to another that the idea has become an invention, at least in general terms.

Examining the Unforeseen Effects of the USPTO’s New Section 112 Guidelines

When the USPTO issued its 2019 Revised Patent Subject Matter Eligibility Guidance in January of this year, it seemed as if the patentability tides had finally shifted in favor of software applicants. Far less attention and fanfare, however, was afforded to the concurrently issued and unassuming Section 112 Guidelines on examination practice for computer-related and software claims. In particular, potential pitfalls awaiting software applicants may lie unforeseen in the requirement that “[f]or a computer-implemented 112(f) claim, the specification must disclose an algorithm for performing the claimed computer function, or else the claim is indefinite.” 

Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention

From a conceptual standpoint, it would seem logical to assume that writing text to describe a particular invention ought to be easy for the inventor of that invention. Unfortunately, it isn’t that simple. While inventors are very good at inventing, they tend to be less good at many of the adjacent and necessary tasks along the road from invention to market success. Indeed, while an inventor undoubtedly knows the invention better than anyone else, it can be enormously difficult for inventors to describe their own inventions. The inventor of a new and useful invention is always in the best position to describe the invention. The problem lies with the reality that most inventors simply don’t understand what needs to be described in order to satisfy the U.S. patentability requirements. And, sadly, when inventors forgo professional assistance, they all too often wind up focusing their entire description of their inventions on how their new device or gadget will be used at the expense of describing the parts and pieces that make up the invention. This is an enormous mistake, and one from which there is often no recovery.