EDITOR’S NOTE: This article is an excerpt from Rules of Patent Drafting: Guidance from Federal Circuit Cases, 2014 Edition, which is now available at Amazon.com. We will be publishing other excerpts in what is scheduled to be a 6 part series.
Time was, patent lawyers were magicians, and their bags of tricks were filled with claim drafting tools. Write “a widget,” and shazam! “a widget” becomes as many as one could desire, all through the rules of claim construction. Single sentence claims went on for days, every other word was “said,” and language included words like “slidingly.” The mechanical people all said “comprising,” and the chemical people all said “consisting,” but nobody knew why, except maybe Judge Rich and Irving Kayton.
Now we have patent practitioners. We think about monetization. Edison, Tesla, Kilby, Noyce—they are all gone, and now our idea of high-tech is a patented tax strategy. If a person commits the sin of colorful language, some guy from Chicago puts a price on his head.
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.
Without noticing anything beyond the individual changes, the patent landscape has completely changed. Suddenly, it’s Disclosure World, where what you disclose is what you get. We Markman, we Festo. The Doctrine of Equivalents has gone the way of the pocket watch: a nice combination of utility and style, but nowhere near as functional as the digital version.
These changes are cumulative, though, and they amount to a Disclosure Revolution. Look at all the areas where the quality of disclosure determines the scope of your claims. Claim construction, where wars are won and lost before a shot is fired. Written description, a doctrine seemingly hidden in the patent law for almost two centuries. Definiteness, where old rules about word meaning depend on what one finds in the Detailed Description. We have not simply changed styles, we have changed worlds.
Yet, as a profession we are living in a mansion on Sunset Boulevard, watching old movies and waiting for a comeback, ready for the close-up that never comes. We still act as though better claim drafting will solve all of our problems. Our books are about claim drafting, our seminars are about claim drafting, our education programs are about claim drafting. We rant endlessly about the latest Federal Circuit decision, and then we go back to exactly what we were doing before. Our idea of an innovative response to prosecution history estoppel is to stop filing amendments.
So far, the patent profession’s response to the Disclosure Revolution mostly consists of throwing up reams of boilerplate. It is common to find two or three pages of boilerplate, all pleading for various points of construction. This response calls to mind Andre Maginot and the French defense establishment, who countered German blitzkrieg strategy by building lots of big forts. That did not work out so well, and to date the flood of boilerplate has enjoyed exactly the same success rate.
Rules of Patent Drafting: Guidance from Federal Circuit Cases is about living and succeeding in Disclosure World. Start from the simple proposition that your claims will be construed solely based on your specification. If that is the world you live in, then you need to write better specifications. Continue to the notion that courts are going to look for the inventor’s intent and will construe the claims based on that intent. If that is what the court is going to, then tell the judge that the inventor intends to include all variations of the claimed structure.
The Disclosure Revolution appears here to stay. If we are to live long and prosper in this world, we must learn to cope with the Revolution on its own terms. That is the goal of my book.
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Rule-Based Patent Drafting
Traditionally, educational efforts in patent drafting have looked a lot like law school. That should surprise no one, given that the pioneers in the field have been legal educators, like Professor Irving Kayton, or lawyers themselves, like the early movers in PLI. Thus, courses and seminars have uniformly oriented on the law itself. Topics such as the Doctrine of Equivalents emerged as intellectual constructs, to be analyzed, thought about, and debated. This approach produced fascinating and useful analysis but little in the way of a doctrinal approach to patent drafting.
Missing from traditional patent education has been a systematic body of principles aimed at drafting quality patent applications. Even where patent workshops and “boot camps” adopt a “practical” slant, the course material continues to be constructed from the same law school-style building blocks. Thus, a workshop session about anticipation under Section 102 will likely be completely interchangeable with the best instruction at George Washington, Stanford, or Berkeley. That session will be followed by a claim drafting exercise in the afternoon. That material is undoubtedly interesting, challenging, and stimulating, but attendees do not hear, “Today we will cover what the Federal Circuit has said about structuring claim elements, and together with a set of principles for meeting those standards.”
Rules of Patent Drafting: Guidance from Federal Circuit Cases fills that gap. The core of this text is a set of Drafting Rules that capture best practices of patent drafting, as prescribed by the Federal Circuit. Understanding and applying these rules will produce patents that will stand up in that forum.
Before proceeding to the text, a useful first step first step is an understanding of the nature of the rules themselves—how they are structured; how they work; what they do; and what they do not do.
Start with a basic definition: Each Drafting Rule sets out a guideline for drafting a single aspect of a patent application, based on Federal Circuit decisions. Guidelines, it must be remembered, provide direction, not absolute limits. A Driving Rule, for example, could be stated as, “Driving speed should be chosen with an eye to the legal speed limit, weather conditions, traffic, and the driver’s environment and personal condition,” rather than, “Do not exceed 55 miles per hour.” The former approach sets out a set of factors to consider when choosing a driving speed, and discussion of these topics could provide detailed guidance. The latter “rule” merely draws a line designed to promote obedience, not understanding.
These Drafting Rules erect a framework for understanding patent drafting. They do not provide recipes to follow without thought. The rules must be parsed, explained, and understood before they can be applied successfully. Like Julia Child’s recipes, they are intended to set out a starting place for comprehension and application, not marching orders for rote memorization.
The Rules focus on drafting U.S. patent applications, and that focus necessarily excludes a number of topics. First, the Rules draw from Federal Circuit decisions, because those decisions largely are U.S. patent law. Some Patent Rules of Practice are cited, along with M.P.E.P. provisions, but the Federal Circuit cases remain at center stage. Similarly, issues related only to litigation are absent altogether. Thus, a Drafting Rule addresses techniques for dealing with Prosecution History Estoppel, but no space is devoted to employing the Doctrine of Equivalents. The same is true of business-related topics, such as patent strategy.
Importantly, I do not try to teach “how to draft a patent application.” Issues that lie outside the range of drafting issues discussed by the Federal Circuit are not addressed here. Because the court spends so much time on claim construction, for example, quite a bit of space is devoted to selecting and employing claim terms. The court is not concerned with claim formatting, strategy, and the like, so those topics, while highly important to drafters, are outside the present scope. This book covers a single topic: a complete and practical view of Federal Circuit thinking about patent drafting.
More to come, including substantive discussion of Federal Circuit precedent and what it means for drafting patent applications.
Next article by Joseph Root: Patent Drafting: The Detailed Description Should Include Multiple Embodiments