Posts Tagged: "Patent Drafting"

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.

Drafting Software Patents: Lessons from Key Lighthouse Cases

Join Gene Quinn, patent attorney and the President & CEO of IPWatchdog, Inc., on Thursday, February 14, 2019, at 12pm EST for a free webinar discussion Drafting Software Patents: Lessons from Key Lighthouse Cases. Joining Gene will be John White, patent expert, lecturer and partner with Berenato & White, and Megan McLoughlin, patent attorney with LexisNexis IP.