Reginald Ratliff is a partner with Vanguard/IP, LLP. His technological experience includes software systems, semiconductor process technology, microprocessors, payment systems, artificial intelligence, cloud-based systems, consumer electronic products, mobile devices, digital systems, analog systems, communication networks, storage devices, and other electronics and computer related technologies.
Prior to founding Vanguard/IP LLP, Reg was a Shareholder at Schwabe, Williamson & Wyatt, Partner at Hanley Flight & Zimmerman LLC as well as Senior Counsel at Womble Carlyle Sandridge & Rice LLP.
He also worked as a Patent Examiner at the USPTO for 11 years, examining applications in the electrical arts and receiving 11 special achievement awards.
In Part I of this series, we discussed the importance of identifying and avoiding patentability-blocking ambiguities in a patent application. It is equally important that the patent application drafter bring a sensibility to the drafting of the application that recognizes that conceptually the application must not simply be seen as a document whose job is to describe an invention but must also be understood to be a document that must have a descriptive capability that enables it to distinguish patent worthy subject matter from prior art. Thus, when the patentability of patent worthy subject matter disclosed by the application is challenged, the application can speak—it is able to defend its patentability. This capability is essential in both pre and post grant forums.
Patents that are expected to protect a company’s most valuable innovations must stake a claim to that innovation and be equipped to defend it. This is because being worthy of patent protection doesn’t guarantee that an application’s claims to an innovation will not be rejected and rights to that innovation jeopardized. A major reason for this is that an examiner’s interpretation of a claim drawn to an innovation that may be worthy of patent protection may cause them to determine that the subject matter as claimed is not patentably distinct from the prior art. Such an interpretation can block the patentability of the claim in the absence of evidence that the examiner’s interpretation of the claim is not reasonable. Structural weaknesses of the detailed description that may or may not be addressed by patent drafting orthodoxy can result in a lack of a capacity to successfully manage challenges presented by an examiner’s interpretations of subject matter set forth in claims. An unorganized capacity to respond to such rejection challenges often leaves the practitioner with very little alternative but to amend claims in a manner that narrows protection to less than what the applicant’s invention should have received.
In the United States Patent and Trademark Office’s (USPTO’s ) patent academy (or today’s version of such), patent examiners are taught that the objective of the patent examiner is to “issue valid patents promptly.” In pursuing this institutional interest, each examiner conducts examinations that they independently manage. Although patent prosecutors cannot control an examiner’s decisions, they can establish a context that encourages a favorable outcome. If first and second application drafters each drafted applications to cover the same invention (that met all of the requirements of 35 USC 112) the presentation of the content in the respective applications could engender drastically different examination processes. This is because there is a relationship between the manner in which the content of a patent application is presented and the character of the examination process that follows.
To protect the inventions that are important to a company’s current and future success, the claims of the patents covering those inventions must accurately define the subject matter that is regarded as the invention and target the right infringers. Drafting claims that accurately define the subject matter that is regarded as the invention requires the crafting of claims to have metes and bounds that precisely circumscribe the subject matter which is regarded as the invention. This can be done by constructing independent claims such that the subject matter regarded as the invention forms the axis around which independent claims are structured. Using this approach, the content of the body of the independent claim is limited to the subject matter that has been identified as that regarded as the invention and any subject matter that is needed to support that subject matter. These subject matter parts are the elements that are needed to accurately define the subject matter protected by the patent. Organizing these elements into patent claim format with the elements recited as broadly as possible provides the fullest measure of protection to which the applicant is legally entitled. This process helps to ensure that those who engage in infringing activity related to the inventive subject matter are implicated by the claim for infringement.
Successful patent strategies for business are inexorably tied to the quality of the patents upon which the patent strategies depend. The quality of a patent depends upon the capacity of a patent prosecutor to resolve a series of non-trivial patent application drafting and/or examination challenges in order to secure the issuance of a valid patent that includes claims that provide a desired scope of protection. Such challenges can involve subjecting complex and/or unwieldy subject matter to patent form in a manner that yields an accurate, clear and complete detailed description of the invention and well-crafted claims. Moreover, they can involve managing difficult patent examiners who require the amendment of claims as a prerequisite to advancing the prosecution of the application. The detailed description and the claims are the parts of the patent that can be employed by the practitioner to imbue a patent with attributes that optimize their support of patent strategies for business.