Posts Tagged: "claim drafting"

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” are not means-plus-function limitations. This change has been decried by practitioners who purposefully avoid the word “means” in order to avoid means-plus-function treatment of their functionally claimed elements. Means-plus-function claiming is an opportunity to be embraced, not a trap to be avoided. Invoking §112(f) and the associated scope of a means-plus-function limitation is largely in the control of the patent drafter.

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 perform the function, the court searched for an algorithm for performing the function, but did not find one. The court rejected Williamson’s argument that the distributed learning control module controls communications among the various computer systems and that the “coordinating” function provides a presenter with streaming media selection functionality. The disclosures relied upon by Williamson were thought of by the court as merely functions of the distributed learning control module and opined that the specification does not set forth an algorithm for performing the claimed functions.

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 US patents. This is not to say that all patents are worthless, far from it. Actually, based on the fact that we have recently received strong offers on several of the portfolio we…

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 invention,” decision after decision rewrites broad claim terms to conform to the scope of disclosure. A single embodiment once served as an example supporting enabled claims bounded only by the prior art; now, a single embodiment signals the inventor’s intend to limit the invention to the embodiment itself, rather than to claim terms… Overall, 2014 will likely be remembered primarily for Alice and its eventual progeny. In addition to its impact on the law per se, the economic effects may prove enormous. An entire segment of the patent community stands vulnerable to a slowdown, or shutdown, of patenting activity in the business methods and software fields. Other areas, including definiteness, will feel the effects of 2014, but in a far more incremental fashion.

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, simple claim construction. Preferably, at least, the key terms are expressly defined, or at least explained through demonstration. Inside thinking takes up the question whether the claim construction supports the patentee’s or owner’s intention, as manifested in the claims and specification. By the time a drafter is “experienced,” she has been exposed to considerable instruction on claim drafting. Claim construction rules, claim drafting principles, claim drafting strategy—the endless seminar. Yet, the Federal Circuit regularly lectures the patent bar on its drafting practices. The difficulty is that among all of our construction rules and strategic principles, we have lost sight of clarity and precision. We need to refocus on basic principles. Indeed, we’re going to need a bigger boat.

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 beyond that of the embodiment (yet inside the ambit of any cited prior art). As discussed at length elsewhere, without diverse claims, courts are likely to determine that the embodiment does not simply illustrate the invention; it is the invention. The court then follows promptly by reading limitations of the embodiment into the claims.

Recent Federal Circuit reasoning should make a patent drafter decidedly averse to single-embodiment patent applications, with good reason. Unfortunately, real-world constraints, principally centering on budget and time issues, have resulted and probably will continue to result in the production of a large number of applications in which multiple embodiments either do not exist or do not justify the time and effort to include them in a patent application… In most instances, the addition of a few sentences would have completely cured the cited problems.

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 in order to overcome the prior art.  Like all claims, method or process claims must completely define the invention so that it works for the purpose you have identified AND it must be unique when compared with the prior art.  By unique I mean it must be new (i.e., not identical to the prior art, a 35 USC 102 issue) and it must be non-obvious (i.e., not a trivial or common sense variation of the prior art, a 35 USC 103 issue). Method or process claims will include active steps to achieve a certain result.  In method claims the transition is typically either “comprising” or “comprising the steps of.”  While legally there may be some distinction between these two different transitions, both are acceptable.

When writing a claim it is important to describe how the various components are structured and how the various components interact and connect. First, include a claim that defines your invention in broad terms, leaving out any and all unnecessary options. Second, include another claim that defines your invention with as much specificity and with every option you can think of. It does not matter that the claims won’t be in perfect format, with appropriate being defined as the format the Patent Office will ultimately require. At the initial filing stage what matters most is that claims are present and they have appropriate scope, with some being broad and some being narrow and quite specific. By starting to write these two claims you will “bookend” your invention. By this I mean you have disclosed the very broad and generic version of your invention, as well as the highly specified version.

But how do you go about patenting an improvement? The first thing you must do is figure out what the advantages are over the prior art. You need to take a critical look at your own invention and identify that which distinguishes it over the prior art. You should absolutely focus on structure, not on the method of use. Differences in the method of use will only come into play if you are claiming a new and nonobvious method of using, which is typically not the case. In the overwhelming majority of cases you want to protect the device or apparatus, which makes use differences irrelevant.