Posts Tagged: "Patent Drafting"

Rules of Patent Drafting: The Disclosure Revolution

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.

How to Describe an Invention in a Patent Application

“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.”

Patent Drawings 101: The Way to Better Patent Applications

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.

Patent Drafting: Top 5 Critical Things to Remember

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.

Patent Drafting: Not as Easy as You Think

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.

Completely Describe Your Invention in a Patent Application

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.

A Myriad of Tips on Biotech Patent Prosecution

On the method claims, the test, derived from Prometheus, is whether the claims add enough to a natural principle/law of nature/ natural phenomenon to make them go beyond claiming just the natural principle/law of natural/natural phenomenon alone and to ensure practical application. If they do and if that extra stuff isn’t just routine or conventional steps known in the field, the claims are patent eligible. So, are diagnostic method claims acceptable, or what about personalized medicine claims outlining which drugs work better for specific patient populations? How about a kit with instructions? We can look to the PTO Guidelines and to the case history after Prometheus to give us a some tips on what may not be eligible and how put our best foot forward when preparing biotech process patent applications.

How to Draft Software Patent Claims After CLS Bank

We’ve got a couple cases following CLS Bank that give us clues as to what a computer-related claim should look like post-CLS Bank. In the Ultramercial v. Hulu case, Rader and Lourie are surprisingly on the same side. The patent covers a method relating to a user seeing an advertisement before getting exposure to his desired media content. A point that I’ll circle back to in a minute is that there were 11 steps recited in the method claims in Ultramercial. As expected, Rader writes an opinion saying this stuff goes on in a computer so we find it’s patent eligible– think Diehr/CLS Bank logic. What’s interesting is Lourie writes a concurring opinion, using as precedent his oh-so-decisive plurality opinion in CLS Bank. He found that unlike in CLS Bank where intermediation was too abstract a concept and the claims added nothing inventive, in this case the limitations represent significantly more than the underlying abstract idea of using advertising.

Drafting Patent Applications: Writing Method Claims

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.

Software Patents: Are they really “Soft”—ware?

Notwithstanding Google’s Jekyll and Hyde approach to patents, Figure 14 together with the associated textual discussion is extremely interesting because it shows rather conclusively that “software” isn’t really all that “soft.” Even many so-called math experts and mathematicians refuse to acknowledge what is really happening on the basic level within a computer when “soft”—ware is being used, instead preferring to pretend that it has to do with basic math rather than manipulation of logic gates and switches. We can complain and lament their lack of understanding if it makes us feel better, but in the meantime we need to realize that their ignorance with respect to what is really occurring is having an enormously negative impact on the future of software patentability.

Turn Your Idea into an Invention with a Good Description

In reality, it is probably better to think of the description requirement as the core to patentability. If you can describe your idea with enough specificity you no longer have an idea, but rather have migrated past the idea-invention boundary, which means you have something that can be patented if it is unique. The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough particularity such that those skilled in the relevant technology will be able to make, use and understand the invention that was made by the inventor. For the most part, and from a legal perspective, this requirement can be explained as consisting of three major parts. First is the enablement requirement, next is the best mode requirement and finally is the written description requirement.

Patent Drafting: What is the Patentable Feature?

Due to the laws of nature, and the reality that there are only a finite number of solutions to any particular problem, every generation invents, or re-invents, many of the same things. Thus, it is always wise to do a patent search to start the process. I guarantee a patent search will uncover inventions that you did not know were out there. With over 8.5 million utility patents having been granted in the U.S. and well over 1 million pending patent applications, and millions of other published but abandoned patent applications there is always something that can be found that at least relates in some ways. You are always better off knowing about those related inventions. This allows you to determine whether moving forward makes sense, and it also allows for a patent application to be written to accentuate the positive, and likely patentable, aspects of an invention.

Patent Claim Drafting 101: The Basics

When writing a claim it is important to describe how the various components are structured and how the various components interact and connect. First, include a claim that defines your invention in broad terms, leaving out any and all unnecessary options. Second, include another claim that defines your invention with as much specificity and with every option you can think of. It does not matter that the claims won’t be in perfect format, with appropriate being defined as the format the Patent Office will ultimately require. At the initial filing stage what matters most is that claims are present and they have appropriate scope, with some being broad and some being narrow and quite specific. By starting to write these two claims you will “bookend” your invention. By this I mean you have disclosed the very broad and generic version of your invention, as well as the highly specified version.

Writing Software Patent Applications

Collecting the information necessary to prepare a patent application covering a computer related invention can be quite challenging. Typically, most computer related inventions today relate at least in some way to software, which is at the core of the challenge. This software challenge stems from the fact that the software code is not protected by patent law, but rather how the software operates is protected. This means that the description needs to be one that can be replicated by others regardless of how they choose to write code to accomplish the necessary tasks.

A Guide to Patenting Software: Getting Started

Any good patent application that covers a software related invention will need to put forth three specific pieces of information. First, you need to describe the overall computer architecture of the system within which the software will exist. Second, you need to prepare a single flowchart that depicts the overall working of the software. Third, you need to prepare a series of flow charts that show with painstaking detail the various routines and subroutines that together connect to create and deliver the complete functionality of the computer system as enabled by the software.