Posts Tagged: "Patent Drafting"

Preparing and Prosecuting a Patent to Stand Up to Challenge

Join Gene Quinn, patent attorney and publisher of IPWatchdog.com, on Thursday, February 8, 2018, at 12pm ET, for a discussion on patent prosecution strategy. Joining Gene will be Russ Slifer, former Deputy Director of the U.S. Patent and Trademark Office and current partner with Schwegman Lundberg & Woessner, and Bernie Tomsa, a patent attorney and shareholder with Brooks Kushman.

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.