Posts in Patent Drafting


How to Patent Software in a Post Alice Era

In a nutshell, if you are going to write a patent application in such a way that at the end of the it the reader is left …
By Gene Quinn
10 months ago 13

FREE WEBINAR: Drafting Patent Applications to Overcome Alice

Join us on Thursday, November 3, 2016 at 2pm ET for a discussion on drafting patent applications to overcome Alice, with JiNan Glasgow of Neopatents and Gene Quinn of …
By Gene Quinn
11 months ago 2

Claim differentiation does not broaden claims beyond their meaning in light of the patent as a whole

Claim differentiation does not broaden claims beyond their meaning in light of the patent as a whole, and cannot override clear statements of claim scope found the …

Federal Circuit affirms Apple iPhone patent victory over GPNE

GPNE sued Apple for direct infringement of claims in two of GPNE’s patents. The patents at issue relate to a two-way paging system, where the paging …
By Gene Quinn & John M. Rogitz
1 year ago 0

Specification Focus on one Embodiment Cannot Limit the Invention if Specification Contemplates Other Embodiments

While much of the specification focuses on a scheme involving patient-identifying information, the Court held that a specification’s focus cannot be limited on one particular embodiment …

Federal Circuit Revisits Scope of Markush Group Claim Elements, Vacates Summary Judgment on Erroneous Construction

However, in spite of the Court’s determination that the Markush group was closed, the Court agreed with Multilayer that the use of the transitional phrase “consisting …

CAFC: Software means plus function claims Indefinite for failure to disclose algorithm

The Court also affirmed that the this means-plus-function term was indefinite. In the case of computer-implemented functions, the specification must disclose an algorithm for performing the claimed …

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 …
By Gene Quinn
1 year ago 0

An Introduction to Patent Claims

The examination you receive from the patent examiner is never going to be any better than the patent claims you provide. If you provide preposterously broad patent …
By Gene Quinn
1 year ago 3

The Quid Pro Quo – How Bad Patents Can Harm A Startup Company

There are many examples of patents that had virtually no value because the claims were undetectable, unenforceable, or ridiculously narrow. In the process of getting a worthless …
By Russ Krajec
1 year ago 12

Is This Patent Any Good? How to Tell a Good Patent From a Bad One

Many inventors boast that they did not understand their patent application because their attorney used "legalese." Some even joke that it was so dense that they did …
By Russ Krajec
1 year ago 7

Pursuit of Extremely Short Patent Claims

Dear Patent Attorney, Please stop filing extremely short, overly broad patent claims. I recently conducted a study to measure the effectiveness of various prosecution strategies. The study …
By Eric Sutton
1 year ago 29

The First Patent: A Roadmap for a Startup’s Patent Portfolio

The first patent is typically filed prior to entering the market. This prophetic patent might have several different ways a product may be designed and capture a …
By Russ Krajec
1 year ago 3

New PTAB Rules Level the Playing Field for Patent Owners in IPR

After much public comment and debate, new changes to rules for post-grant administrative trials before the Patent Trial and Appeal Board (PTAB) go into effect on May 2, 2016. …

A Better Way to File Patent Applications

The PathWays system is designed to help applicants predict which art units an application is likely to be filed before the application is even filed. A unique …
By Megan McLoughlin
1 year ago 8