Posts Tagged: "Patent Drafting"

To bring this principle to bear on the problem of claim breadth, consider a patent disclosing only a single embodiment, with a main claim whose scope extends beyond that of the embodiment (yet inside the ambit of any cited prior art). As discussed at length elsewhere, without diverse claims, courts are likely to determine that the embodiment does not simply illustrate the invention; it is the invention. The court then follows promptly by reading limitations of the embodiment into the claims.

Patent prosecutors have responded to the Disclosure Revolution in much the same way that clergy and medical doctors responded to the Black Death. Medieval doctors offered incantations and ritual; patent lawyers recite boilerplate. Neither is particularly effective.

It is also vitally critical for inventors to understand that the strength and breadth of your disclosure will be determined not only by the general descriptions, but by the specific descriptions that explain various embodiments.  Inventors frequently want to only describe things very generally, and that is a recipe for disaster. If you describe things so broadly it will be easy to find prior art for the invention disclosed, which means no patent may be able to be obtained. Resist the temptation to hold back on the specifics. If you don’t want to provide the specifics that is fine, but then you really shouldn’t be applying for a patent at all.

Recent Federal Circuit reasoning should make a patent drafter decidedly averse to single-embodiment patent applications, with good reason. Unfortunately, real-world constraints, principally centering on budget and time issues, have resulted and probably will continue to result in the production of a large number of applications in which multiple embodiments either do not exist or do not justify the time and effort to include them in a patent application… In most instances, the addition of a few sentences would have completely cured the cited problems.

Along with their ABC’s and multiplication tables, patent lawyers learn two basic principles. First, claims define the invention. Second, a court should not read limitations from a single embodiment into the claims, absent a demonstrated clear intention by the patentee to do so. Don’t believe them. When the Federal Circuit brings up the principle that one should not import the limitations of a single embodiment into a broader claim, expect the opinion to show how, under the particular, specifically limited facts of the present case, the inventor actually intended to limit the claims to the disclosed embodiment.

The claim drafting wizard is gone, but no one notices that his passing is not a normal, stylistic change, going from gray flannel to bellbottoms to designer jeans. Step back and survey the patent world as a whole, and one sees a fundamental shift in thinking over the last two decades. It is not just the claim drafting wizard but the entire idea of patent claims that is gone. We still observe the old forms—every patent brief and judge’s opinion begins, “The claims define the invention.” And then something happens. Perhaps it turns out that the single embodiment was the true expression of the invention. Or a line in the Summary suggested that the invention would not work unless the widget were painted red, so that was added to the claims. Or a line in the prosecution history could be read to suggest that the widget needed to be painted blue. Or any of the other reasons for not simply reading and applying the claims.

“In order to satisfy this requirement you need to specifically and objectively define and describe how to make and use your invention. The enablement requires says that every embodiment needs to be described so that it can and will work. The quickest way to explain the concept of enablement 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.”

To properly accomplish the goal of having the best disclosure possible you should also not think in terms of a single patent drawing or illustration, but rather in terms of however many patent drawings are necessary in order to demonstrate what you have invented. Most patent applications have at least several sheets of drawings, with each sheet routinely having multiple views of the invention. You may need to show various views (top, bottom, right, left, etc.), or you might show what is called an exploded view, where the elements are suspended in space and if you envision them collapsing inward the device would become whole. You may also want to break down the invention and show drawings of one or more of the component parts. In my experience most patent application do not have as many drawings as they could have, which is a mistake.

Many times inventors fail to adequately describe their inventions because the invention is obvious to them, and they think it will be equally obvious to others. The law, however, requires that a patent application explain the invention to someone who is not already familiar with the invention. One of the best way to do this is to explain it like a child explains things when doing a show and tell at school. Children explain everything in excruciating detail, no matter how obvious. Kids do this when they describe things because they have no idea what the person listening knows, and to them it is new and interesting so they explain everything with tremendous detail (whether you want to hear it or not). That is exactly what you need to do in the application. Explain your invention with so much detail that you will bore the knowledgeable reader to death.

If you are considering moving forward on your own the first question you should ask is whether you should even be pursuing an invention. The cost of filing for and obtaining a patent is typically quite minor in comparison to the amount of money required to create, market and distribute the invention. So if you can only muster several hundred dollars and need to file your own application because that is all you have, what are the realistic chances that you will be able to move forward in the commercialization process? I understand it is prudent to proceed with care and not needlessly waste money, but a couple hundred dollars is not a realistic budget. Truthfully, you might as well go to Vegas and put it all down on black (or red) and let it ride. At least you have close to a 50% chance, which is a greater chance of success than having only a few hundred to spend on your invention.

Simply said, a patent application is only as good as what is included within the application, and general or vague descriptions do nothing more than guarantee that no patent will ever issue. Beyond that, how can you realistically do a patent search on a first level, vague articulation of an invention? At present there have been more than 8.7 million U.S. utility patents granted and over 700,000 design patents granted. I can guarantee that if you vaguely describe your invention it will be easy to find prior art that will be exactly what you have described. Of course, when you see it you will say: “that isn’t anything like my invention.” But if you say your invention is multi-purpose knife, for example, and that is all you say then any multi-purpose knife would be prior art that would prevent you from obtaining a patent.

Method or process claims are relatively easy to write once you know what the core invention is and what is necessary to be included in the claim in order to overcome the prior art.  Like all claims, method or process claims must completely define the invention so that it works for the purpose you have identified AND it must be unique when compared with the prior art.  By unique I mean it must be new (i.e., not identical to the prior art, a 35 USC 102 issue) and it must be non-obvious (i.e., not a trivial or common sense variation of the prior art, a 35 USC 103 issue). Method or process claims will include active steps to achieve a certain result.  In method claims the transition is typically either “comprising” or “comprising the steps of.”  While legally there may be some distinction between these two different transitions, both are acceptable.