Posts in Patent Drafting


Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application

You absolutely want to file a patent application with a description that is a mile wide — that part is good — but you also need to also drill …
By Gene Quinn
28 days ago 2

Beware of Conditional Limitations when Drafting Patent Claims

Buried in the claim language, conditional limitations may be a vulnerability in an otherwise valuable claim. A conditional limitation is a claim feature that depends on a …
By Vladimir Lozan
2 months ago 24

Breadth through Specificity: Supporting Alternative Embodiments with Multiple Examples in Patent Applications

Two recent cases, The Medicines Co. v. Mylan, Inc and Skedco, Inc. v. Strategic Operations, Inc., illustrate that the patentee’s specification is key to determining whether …
By Matthew Kinnier & Emily Dubuc
3 months ago 3

Definiteness and Patent Drafting: The Nautilus Surfaces

Two seminal cases illustrate the techniques of analyzing definiteness in a post-Nautilus world. One case followed Nautilus and the other preceded it, but that case demonstrates what …
By Joseph Root
6 months ago 0

Optimizing Patent Applications: Drafting to Withstand Challenge

Drafting a patent application can be a daunting task, particularly today where virtually every commercially valuable patent will likely be challenged at the Patent Trial and Appeal …
By Gene Quinn
6 months ago 2

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 …
By Gene Quinn
7 months ago 0

Federal Circuit Affirms Patent Invalidity and District Court’s Denial of Post-Judgment Motions

The Federal Circuit heard the case on TVIIM, LLC v. McAfee, Inc. A unanimous panel of the Federal Circuit affirmed jury determinations of non-infringement and patent invalidity …

Examining USPTO Business Method Patent Eligibility Examples

On December 15, 2016, the USPTO published three subject matter eligibility examples focusing on business method claims. The purpose of these examples is to give guidance on how claims …
By Kris Rhu & Paul Gurzo
7 months ago 1

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 ", …
By James Yang
8 months ago 4

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 …
By Brian Cronin
8 months ago 2

Water Balloons, Weapons of Mass Destruction and the PTAB

The Federal Circuit, while deciding a preliminary injunction was properly granted, addressed the PTAB decision in its oral arguments and in its decision. In oral arguments Judge …
By Paul Morinville
9 months ago 11

The quest for patent quality: European inventive step and US obviousness

In Europe and the US, patentability depends on a showing of inventiveness that is based on similar legal requirements but practice differs substantially and the resulting patent …
By Brian Cronin
10 months ago 9

Patent Drafting 101: The Basics of Describing Your Invention in a Patent Application

One big mistake inventors make is they will go on page after page in their draft patent application about how they came up with the idea for …
By Gene Quinn
10 months ago 4

Patent Drafting for Beginners: The anatomy of a patent claim

First, every patent claim needs a preamble, which is the introductory phrase in a claim... Second, every patent claim needs a transition. The most common transitions are: “…
By Gene Quinn
10 months ago 21

Comparing and Contrasting European 2-part claims with US Jepson claims

European practice requires a strict distribution of the features before and after "characterizing", where those prior art features that are common with the definition of the invention …
By Brian Cronin
11 months ago 1