Patent Drafting Best Practices: Latest Trends & Real World Realities *

Patent Drafting Best Practices: Latest Trends & Real World Realities *

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Drafting a patent application is not easy. A patent application needs to describe your invention completely, and if you really are entitled to a patent, then at least some aspect of your invention is new and non-obvious, which means that heretofore it hasn’t existed. Describing something that has never existed is more of a challenge than most people realize, including the Federal Circuit, which only ever demands more and more disclosure. Indeed, while Jepson claims are generally avoided by most practitioners, the latest pronouncement from the Federal Circuit would require all of the prior art in the Jepson preamble to have adequate written description support in the specification. The requirements, whether realistic and achievable or not, seem never-ending.

What is a practitioner to do in order to satisfy not only the United States Patent and Trademark Office (USPTO), but also the views and requirements of the federal judiciary 10 to 15 years from now? Yes, 10 to 15 years from now, not hyperbole, but with full recognition that most patents that get litigated are approximately 10 years old, and prosecution in an era with extreme backlogs can easily take 3 to 5 years. And further full well knowing that whenever a patent is litigated, regardless of the laws and requirements in play at the time of filing, sufficiency of claims and disclosure will be evaluated based on the sensibilities and evolution of the law as of the time of litigation.

Against the enormity of the task facing patent practitioners, this panel will discuss best practice and latest trends for drafting patent applications that will stand the test of time, including a discussion of the latest AI tools available.

Materials

• What Fintiv v. PayPal Means for Software and AI Patent Practice
• The High Bar for Section 112 in the Unpredictable Arts as Illustrated by In re Xencor
• USPTO Issues Reminder to Examiners on Means-Plus-Function Analyses
• AI Tools for Patent Drafting: LLMs Will Likely Never Write Claims as Well as Humans
• USPTO Says Wands Still Controls Post-Amgen in New Enablement Guidelines

Survey

https://www.surveymonkey.com/r/Patent-Drafting-Best-Practices