Posts Tagged: claim drafting


Software Patent-Eligible Subject Matter: Claiming Improvements in Computer Functionality

Particularize the claims.  This helps overcome the “abstract” part of a 101 rejection. Put details into the claims to define the steps performed in the software and hardware …
By G. Michael Roebuck
9 days ago 30

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
12 months ago 24

§ 112 Rejections: Where They Are Found and How Applicants Handle Them

In this article, we will explore both § 112(a) and § 112(b) rejections by taking a look at where they are most common, how applicants respond to them, and …
By James Cosgrove
1 year ago 0

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
2 years ago 1

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
2 years 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
2 years ago 3

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
2 years ago 29

How to Get Broader and Good Quality Patents

Patents, for a long while, have been an integral part of business development strategy. Companies like ARM and Qualcomm, for example, have built their business around patents …
By Shikhar Sahni
2 years ago 5

Patent Drafting: The Use of Relative Terminology Can Be Dangerous

The use of relative terminology, which are short-hand terms that express a certain similarity, are quite common in every day conversation, but are not always appropriate for …
By Gene Quinn
3 years ago 5

Was the Federal Circuit Trying to Save Us from Ourselves in Williamson v. Citrix?

In Williamson v. Citrix, the Federal Circuit overruled its own precedent that there is a “strong” presumption that claim limitations that do not use the term “means” …
By Bryan Wheelock
3 years ago 6

Functional Claiming of Computer-Implemented Inventions in View of Recent Decisions

The opinion focused on whether adequate structure corresponding to the “coordinating” function is disclosed in the specification. After determining that a special purpose computer is required to …
By Nicholas R. Mattingly
3 years ago 1

What makes a patent valuable; A patent broker’s perspective

In a recent article Toxic Asset, we explained in detail how much recent court decisions and new rules at the USPTO had negatively impacted the value of …
By Louis Carbonneau
4 years ago 3

The Disclosure Revolution – A Report from the Front, 2014

The Disclosure Revolution is an ongoing process that has transformed patent law over the last couple of decades. While courts continue to say, “The claims define the …
By Joseph Root
4 years ago 1

A Patent Drafting Checklist

Drafters need to think both outside and inside the claims. Outside thinking aims to make the court’s task easier by providing claim terms amenable to straightforward, …
By Joseph Root
4 years ago 2

Patent Drafting: Employing Claim Differentiation to Ensure Broad Construction

To bring this principle to bear on the problem of claim breadth, consider a patent disclosing only a single embodiment, with a main claim whose scope extends …
By Joseph Root
4 years ago 1

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