Posts Tagged: "Patent Drafting"

Defining Computer Related Inventions in a post-Alice World

it is absolutely critical that computer related inventions describe the technology to the greatest extent possible, focusing on as much that is tangible as possible.

Optimizing Patent Applications: Drafting to Withstand Challenge

It is now truer than ever that patent drafters must treat every invention as the million dollar, or billion dollar, invention from the start. By the time you realize the invention warrants that level of attention it will be too late to do anything, that is unless you laid the foundation of a solid patent application from the earliest stages. This means an extraordinarily detailed specification, it means thoughtful application of as much known prior art as possible, and it means checking and cross-checking to make sure that initial filing is as complete and error-free as possible.

Patent Application Drafting: Using the Specification for more than the ordinary plain meaning

As a general rule the ordinary plain meaning of the term as would be understood by someone of skill in the relevant technology area or science will be used. That may or may not be bad, and it may or may not be what you intended… When I teach this topic the example I tend to use relates to “standard room temperature.” If you have invented a process that needs to be carried out at 68 degrees F you might say that the process can or should be carried out at standard room temperature, for example. In the U.S. standard room temperature is generally referred to as 20 degrees C, which is 68 degrees F. But in some parts of the world what qualifies as standard room temperature is a bit warmer, sometimes up to 25 degrees C. So this illustration is particularly useful for several reasons. When you say standard room temperature did you even know that it has an accepted meaning in the scientific community? Were you aware that the meaning could vary depending upon whether the person reading the disclosure is in the United States or some other part of the world? This is where defining what you mean could be particularly important.

Patent Drafting Tip: A comma affects meaning of items in list

The issue was whether the comma in the phrase “, otherwise available to the public” meant that the phrase also modifies the phrase “on sale.” If the phrase “, otherwise available to the public” does modify the “on sale” phrase then offers for sale of a product or service not offered to the public but made in secret would no longer be a bar to patentability… At least one District Court opinion has also followed the interpretation of the phrase “, otherwise available to the public” as also modifying the “on sale” phrase consistent with the USPTO. Helsinn v. Dr. Reddy’s and Teva (D.N.J. 2016).

Flexible problem-solution analysis for drafters with Europe in mind

The problem-solution paradigm has become a cornerstone of patentability in Europe. If the invention cannot be reduced to the format of a technical solution to a technical problem, this could be a sign that either the supposed invention is non-technical, or the contribution over the state of the art is non-technical. In Europe, non technical inventions are excluded much in the same way as abstract ideas are deemed non-patent eligible in the US. Inventions that make no technical contribution are refused for obviousness. The EPC and the subsequent case law do not have a precise definition of what is technical (non-abstract) and non-technical (abstract). Nevertheless there is a growing body of case law on inventions which involve a mix of technical features and non technical features and that are refused for lack of inventive step because the non-technical features are disregarded.