Posts Tagged: "Joseph Root patent drafting"

Definiteness and Patent Drafting: The Nautilus Surfaces

Two seminal cases illustrate the techniques of analyzing definiteness in a post-Nautilus world. One case followed Nautilus and the other preceded it, but that case demonstrates what stands of the old rationale. The first decision, Ethicon Endo-Surgery, Inc. v. Covidien, Inc., dealt with ultrasonicshears for cutting and sealing a blood vessel… A clear difference between the new “reasonable clarity” standard and the Federal Circuit’s “insolubly ambiguous” formulation is that the latter calls for considerable effort in seeking out a claim construction that comports with the inventor’s manifest intent. The new standard may require the same effort, but that result does not appear guaranteed by the language itself. The entire direction of patent law toward Disclosure World suggests that definiteness will continue to be governed in large part by the meaning drawn from the patent as a whole, not the claim language standing alone.

Optimizing Patent Applications: Drafting to Withstand Challenge

Drafting a patent application can be a daunting task, particularly today where virtually every commercially valuable patent will likely be challenged at the Patent Trial and Appeal Board (PTAB). Join me for a free webinar discussion – Optimizing Patent Applications: Drafting to Withstand Challenge – on April 19, 2017, at 2pm ET. Joining me will be Joseph Root, author of Rules of Patent Drafting: Guidelines from Federal Circuit Case Law. In addition to taking as many questions as possible from the audience we will discuss: (1) Best practices writing to overcome Alice-based 101 rejections; (2) Identifying the invention/improvement versus KSR 103 concerns; (3) Best practices for ensuring a complete and thorough specification; and (4) Nautilus, means-plus-function and other 112 matters.

The Disclosure Revolution – A Report from the Front, 2014

The Disclosure Revolution is an ongoing process that has transformed patent law over the last couple of decades. While courts continue to say, “The claims define the invention,” decision after decision rewrites broad claim terms to conform to the scope of disclosure. A single embodiment once served as an example supporting enabled claims bounded only by the prior art; now, a single embodiment signals the inventor’s intend to limit the invention to the embodiment itself, rather than to claim terms… Overall, 2014 will likely be remembered primarily for Alice and its eventual progeny. In addition to its impact on the law per se, the economic effects may prove enormous. An entire segment of the patent community stands vulnerable to a slowdown, or shutdown, of patenting activity in the business methods and software fields. Other areas, including definiteness, will feel the effects of 2014, but in a far more incremental fashion.

A Patent Drafting Checklist

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.

The Patent Drafting Disclosure Revolution: Don’t Ask Alice

No question exists that patent eligibility under Section 101 has been, and remains, the most active question in patent law. Watching the rapid flow of cases back and forth between the Federal Circuit and the Supreme Court exceeds the excitement generated by most TV shows in sheer entertainment value. The only question open for discussion is whether we are watching “Game of Thrones,” “Survivor”, or “Modern Family.” Actually, the best choice may be “Lost”.