Posts Tagged: "Patent Drafting"

The Language of Patents (Part II): Organizing the Descriptive Capability of the Detailed Description to Distinguish Patent Worthy Subject Matter from the Prior Art

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.

Drafting Lessons from a 101 Loss in the Eastern District of Texas

On March 30, Judge Sean D. Jordan of the United States Federal District Court for the Eastern District of Texas, issued a rather atypical Order, at least for the Eastern District of Texas. A defendant prevailed on a motion to dismiss. See Repifi Vendor Logistics, Inc. v. IntelliCentrics, Inc., Civil No. 4:20-CV-448-SDJ. Those familiar with patent litigation know that, over many years, the Eastern District of Texas has been a notoriously favorable venue for patent owners to pursue patent infringement lawsuits against alleged infringers. One of the things that has made the Eastern District of Texas so compelling from the patent owner perspective is the extraordinary reluctance of judges to rely on procedural motions to dispose of lawsuits in favor of defendants. It is no exaggeration to say that virtually everything that is filed in the Eastern District of Texas will go to trial unless it settles, which can raise the pressure on defendants to settle, sometimes for nuisance value alone.

Understand Your Utility Patent Application Drawings

While it has been said that the how and why of patent application drawings are usually best left to the professionals, I do think it is important for everyone – from the solo inventor to the big firm practitioner – to have a general understanding of the basics of utility application drawings. It is nice to be able to rely on an illustration service to get everything right for you; however, as the person with the name on the patent application, you are ultimately responsible for the content and form of the drawings that are submitted. This article will touch on the fundamentals of a utility drawing. While you may not be creating the drawings, it is crucial that you have an idea of what to look for in order to be compliant with U.S. Patent and Trademark Office (USPTO) guidelines.

Getting a Patent: The Devastating Consequences of Not Naming All Inventors

Naming the correct inventors is critical when drafting a U.S. patent. Patents must have all inventors properly named. Deciding who is an inventor is a complicated task and great care must be taken to not add or omit people who are not inventors. It is possible that failure to properly name the inventors could result in losing your patent or its value. If inventors have been improperly added or omitted, the patent must be corrected or it could be declared invalid.

Make Your Disclosures Meaningful: A Plea for Clarity in Patent Drafting

Legal writing has long attracted criticism. In Gulliver’s Travels, Jonathan Swift complained of lawyers’ “peculiar cant and jargon of their own, that no other mortal can understand.” (p. 317.) More recently, Loyola Law School professor Robert Benson lamented how “[l]egalese is characterized by passive verbs, impersonality, nominalizations, long sentences, idea-stuffed sentences, difficult words, double negatives, illogical order, poor headings, and poor typeface and graphic layout.” Robert W. Benson, “The End of Legalese: The Game is Over,” 13 N.Y.U. Rev. L. & Soc. Change 519, 531 (1984). Ouch. Patent disclosures often reveal the same warts. But if “[t]he purpose of the written description requirement is to assure that the public receives sufficient knowledge,” Zoltek Corp. v. United States, 815 F.3d 1302, 1308 (Fed. Cir. 2016), why must we suffer such side effects? Drafters guilty of these crimes must’ve forgotten the public’s right to “receive meaningful disclosure in exchange for being excluded from practicing the invention.” Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 970 (Fed. Cir. 2002).

Avoid the Patent Pit of Despair: Drafting Claims Away from TC 3600

I’ve recently hosted two webinars on patent classification, taking a look at how contractors for the U.S. Patent and Trademark Office (USPTO) determine where to route each patent application within the Office after filing. One webinar dealt with classification generally and a second dealt specifically with classification relating to computer implemented inventions. These webinars were fascinating on many levels. Did you know that the old patent classification system plays an important role in determining which Art Unit is assigned an application? And you probably thought you could forget about class 705! Not so fast! A sparsely populated technical disclosure in the specification with an inartful claim set is still a recipe for characterization in class 705, which still must be avoided at all costs if possible.

The Most Common Design Patent Application Rejections (and How to Avoid Them) – Part I

As one of about 46,000 registered practitioners in the United States, most of us are unfortunately too well acquainted with Section 101, 102, and 103 rejections from the U.S. Patent and Trademark Office (USPTO). But it may be surprising that most rejected design patent applications are not rejected under these sections. Instead, the least favorite number of the design patent practitioner is 112. While Section 112 rejections on utility applications are generally easily overcome, that is often not always the case with such rejections on design applications. Since there are only about 30,000 design applications issued each year, each of the 46,000 registered practitioners handle on average less than one design application per year! So, for those unfamiliar with the quirks of design patent practice, which is most of us, and since design patent applications have a relatively high allowance rate of 84% (see the USPTO Data Visualization Center/Design Data page, it might be tempting to rely on your patent draftsperson to prepare what they think are adequate drawings, copy the mostly boiler-plate specification language, and just file the application. But that can be a costly mistake.

Software Patent Drafting Lessons from the Key Lighthouse Cases

Obtaining a U.S. software patent is still harder than it was five years ago, but studying these “lighthouse” cases can improve one’s chances of success. While the Federal Circuit’s decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and the USPTO’s guidance to patent examiners on the Berkheimer decision have recently improved the landscape for software patents, the following cases contain critical lessons for drafters that can further ensure claims are patent eligible.

Patent Drafting Basics: Instruction Manual Detail is What You Seek

In some important ways a patent application should be akin to an instruction manual, but unlike the aforementioned BBQ grill, the reader of relevant skill in the area is the one that should be able to follow along. Having said this, there is an important caveat! A patent is not a blueprint… Have you ever seen a worthwhile instruction manual without good, high-quality drawings showing you what to do? Probably not. So, if you’ve been frustrated by the decreasing quality of instruction manuals when “some assembly is required”, you fundamentally already know exactly what you need to do when you draft a patent application. Lots of drawings, lots of descriptive text that focuses on the key elements of the invention — that’s what makes a great patent application.

How to Write a Patent Application

Writing a patent application is not as easy as many think. Indeed, the concept of usefully describing the invention, which on its face seems easy enough to understand, is not as straight forward as it might seem, and why you cannot simply file an abbreviate description of an invention and think that suffices to protect anything really. This article looks at the most common parts of a patent application, and provides discussion about what each section needs to include.

Admissions as Prior Art in a Patent: What they are and why you need to avoid them

So what is an admission? A statement made during patent prosecution identifying the work of another as prior art is called an admission. Admissions can and will be relied upon by patent examiners for both novelty (35 U.S.C. 102) and obviousness (35 U.S.C. 103) determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the express terms of the statute. Admissions should be avoided at all costs, regardless of how innocent they seem to be. This is a lesson that all new patent practitioners and inventors need to take to heart. No matter how innocuous the statement may seem, always remember that no good deed will go unpunished! Everything you do say can and will be used against your patent once it issues — forever.

Patent Drafting: The most valuable patent focuses on structural uniqueness of an invention

It can be enormously difficult for inventors to describe their own inventions. This is true not because the inventor doesn’t know what they’ve invented, or even because the inventor is not in the best position to explain the invention. Indeed, the inventor of a new and useful invention is absolutely in the best position to describe the invention… Inventors are very good at describing how their inventions can be used and why their invention is superior from a usability standpoint. The trouble is describing how an invention can be used, while a prerequisite, will not distinguish a tangible invention from the prior art.

A Primer on Indefiniteness and Means Plus Function

Means plus function claiming allows the drafter to claim the invention based on functionality rather than the more traditional (and preferred) claiming technique that employs structure within the body of the claim itself… If there is no structure in the specification the person of skill in the art cannot save the disclosure by understanding what the drafter intended to be covered by the means plus function limitation in the claims. Thus, means-plus-function claims are valid at the mercy of the specification, and only to the extent that the specification contains support for the structures that define the means… The Federal Circuit does not blindly elevate form over substance when evaluating whether a particular claim limitation invokes means treatment. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) (“We do not mean to suggest that section 112(6) is triggered only if the claim uses the word ‘means.’”).

Patent Drafting: Proving You’re in Possession of the Invention

The purpose of the written description requirement is broader than to merely explain how to make and use the invention, which is the subject of the enablement requirement. Rather, to satisfy the written description requirement the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention… While the written description is just that – written – having multiple drawings that show the invention and various aspects of the invention from a variety of viewpoints can be extremely helpful. This is because every figure should be described with at lease one paragraph of text, frequently more.

Patent Drafting Webinar: Trends and Realities of 112 Disclosure Requirements

Join Gene Quinn on Thursday, November 9 at 2:00 PM ET for a free webinar conversation on the trends and reality of 112 disclosure requirements. Gene will be joined by Todd Van Thomme, a shareholder with Nyemaster Goode PC, and Cynthia Gilbert, co-founder of Blueshift IP. Van Thomme specializes in mechanical and food science related innovations, while Gilbert specializes in computer implemented inventions. We will, therefore, focus our 112 discussions on these specific areas.