Posts Tagged: "Patent Drafting"

Is This Patent Any Good? How to Tell a Good Patent From a Bad One

Many inventors boast that they did not understand their patent application because their attorney used “legalese.” Some even joke that it was so dense that they did not even know if their invention was in there. Make no mistake about it: a good patent is easy to read. Patents are business documents that are read and understood by real people, not attorneys. When the patent is litigated, the patent is read by a judge and jury, who are common, ordinary people. If a normal person cannot understand the patent, neither can they.

Pursuit of Extremely Short Patent Claims

Dear Patent Attorney, Please stop filing extremely short, overly broad patent claims. I recently conducted a study to measure the effectiveness of various prosecution strategies. The study covered over a hundred thousand patent assets pursued by software companies, and for this sample, I found that filing extremely short, overly broad patent claims is a bad strategy in just about every way imaginable.

A Better Way to File Patent Applications

The PathWays system is designed to help applicants predict which art units an application is likely to be filed before the application is even filed. A unique semantic search algorithm compares user submitted text to weighted key words derived from an exhaustive collection of application documents clustered in each USPTO art unit.

Patent Drafting: Define terms when drafting patent applications, be your own lexicographer

Being your own lexicographer means is that you who can define your invention using whatever terms you choose, and after attributing pretty much whatever meaning you want to give to the terms you use. Indeed you get to define the terms you use so long as any special meaning you assign to any particular term is clearly set forth in the specification. It is true that the ordinary plain meaning of the terms as would be understood by one of skill in the relevant technology field will be applied if you do not provide your own definitions, but leaving nothing to chance is generally a good idea. It is an absolute prerequisite if you are using a term that has multiple possible meanings, or if you are referring only to a certain subset of what the term generally means or could mean.

Patent Language Difficulties: Open Mouth, Insert Foot

Patent attorneys darn near need to be magicians when it comes to language, which is the primary tool of our craft. Picking the right word and the right way to say things is critical. Even more critical, perhaps, is not saying the wrong thing, or worse yet saying something that is clear but not what you intended. Today I thought…

Patent Drafting: The Use of Relative Terminology Can Be Dangerous

The use of relative terminology, which are short-hand terms that express a certain similarity, are quite common in every day conversation, but are not always appropriate for patent applications, or more specifically for patent claims. This is true because patent claims must particularly pointing out and distinctly claiming the subject matter invented. Therefore, the use of relative terminology in patent claims should be carefully considered. Traps do await the unwary.

Patent Drafting: Learning from common patent application mistakes

One of the biggest mistakes I see inventors make is they spend too much time talking about what the invention does and very little time explaining what the invention is and how it operates to deliver the functionality being described. Many inventors also make the mistake of only very generally describing their invention. If that is you then you are already light on specifics, which is extremely dangerous in and of itself. But the other problem I want to discuss is the flip side of the coin. It is important to be specific, but not just specific.

Patent Drafting: Distinctly identifying the invention in exact terms

In short, a concise description of an invention is an inadequate description of an invention, period. The goal has to be to provide a full, clear, exact description of the invention in a way that particularly points out and distinctly identifies what the inventor believes he or she has invented and wants protection to cover. Even knowing what the legal standard is for the description that must be present in a patent application does not ensure that those without training will be able to satisfy the requirement. The blame for this goes to the way most people describe things as they engage in ordinary, everyday communications.

Patent Drafting: Understanding the Specification of the Invention

This so-called adequate description requirement pertains to the level of description that must be included in the ”specification,” which is most typically defined as that part of the patent application that is not a drawing figure and is not a claim. This is the most common definition for the term “specification” because if and when you need to amend an application there are three separate sections for an amendment, one for amendments to the specification, another for amendments to the claims, and a third for amendments to the drawings. When you get to the point of the process where you will need to amend the application (which goes beyond the scope of this article) you will amend anything that is not a claim and not a drawing under amendments to the specification.

Tricks & Tips to Describe an Invention in a Patent Application

One excellent way to make sure you are including an appropriately detailed description that treats a variety of variations and alternatives is to have many professional patent drawings. You should then describe what each drawing shows. The quickest way to explain what you want to do is by way of example. The popular children’s song “Skeleton Bones” explains how all the bones in the body are connected. The leg bone is connected to the knee bone, which is connected to the thigh bone, which is in turn connected to the back bone, which is connected to the neck and so on. Notice that this is a very general overview of how the bones in the body are connected. This is a good first step, but there is a lot more that can and should be written.

Best Practices for Drafting Software Patent Applications post-Alice

Don’t be afraid to make the technical disclosure long, dense and difficult to read, at least for those without technical training. In my opinion one of the biggest reasons the Supreme Court has embarked upon this path to render much innovation patent ineligible is because they actually understand the inventions in question. In Bilski, for example it was little more than thinking, observing and acting. In Alice they convinced themselves it was just little more than ledger accounting. Dumbing down the technical disclosure so even a Justice of the Supreme Court can understand is a mistake, at least in my humble opinion.

Patent Drafting 101: Beware Background Pitfalls When Drafting a Patent Application

Pitfalls to be on the lookout for when you are preparing the Background of the Invention. First and foremost it is critical to remember that your patent application is about your invention, not the prior art. You will only discuss in vague, cursory terms the prior art and only to the extent that it can be useful and not harmful. You must always remember the problems inventors face when they lock themselves into a particular articulation of structural features and when they trivialize their own invention by making it seem obvious.

Describing an Invention in a Patent Application

It is absolutely critical to understand that this complete and full description MUST be present as of the filing date of your application. If you file an application that does not describe the invention to the required level required by U.S. patent laws the application is defective and it cannot be fixed. The only way to fix an inadequate disclosure is to file a new application with an adequate disclosure, but that means you obtain no benefit from the filing of the earlier inadequate patent application.

Functional Claiming of Computer-Implemented Inventions in View of Recent Decisions

The opinion focused on whether adequate structure corresponding to the “coordinating” function is disclosed in the specification. After determining that a special purpose computer is required to perform the function, the court searched for an algorithm for performing the function, but did not find one. The court rejected Williamson’s argument that the distributed learning control module controls communications among the various computer systems and that the “coordinating” function provides a presenter with streaming media selection functionality. The disclosures relied upon by Williamson were thought of by the court as merely functions of the distributed learning control module and opined that the specification does not set forth an algorithm for performing the claimed functions.

Avoiding Invocation of Functional Claim Language in Computer-Implemented Inventions

Functional claim language is increasingly being used by practitioners to capture the metes and bounds of an invention, especially in computer-implemented inventions. Sometimes using functional language in a claim limitation is unavoidable. Functional language does not, in and of itself, render a claim improper. However, as recently experienced in Williamson v. Citrix (en banc) and Robert Bosch, using functional language carries a significant risk of having the claim invalidated as indefinite following a determination that the claim invokes § 112(f) even when the patentee does not intend to have the claim treated under § 112(f).