Posts Tagged: "how to write a patent application"

Patent Drafting: Proving You’re in Possession of the Invention

The purpose of the written description requirement is broader than to merely explain how to make and use the invention, which is the subject of the enablement requirement. Rather, to satisfy the written description requirement the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention… While the written description is just that – written – having multiple drawings that show the invention and various aspects of the invention from a variety of viewpoints can be extremely helpful. This is because every figure should be described with at lease one paragraph of text, frequently more.

Patent Drafting 101: Say What You Mean in a Patent Application

When drafting a patent application it is always the best policy to never assume anything. It is dangerous to assume that the reader will fill in any ambiguous holes in the manner you desire, and as here, if what you literally say is clear you run the very real possibility that an assumption on your part will wind up meaning something very different than you intended because you did not take the time to go the extra step to remove all doubt.

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 down far more than one inch deep in order to teach the various nuances of at least the key aspects of the invention. And there are always nuances that can go a mile deep for any and every invention, no matter how simple it may seem to you as the inventor… How do you know how far you need to go? You really should strive to remove doubt and questions from the reader’s mind. While a certain amount of experimentation is allowable, and patents do not need to contain blueprint level detail, ask yourself whether a knowledgeable reader would know from what you’ve written enough to understand your invention without asking additional questions. If answers to additional questions would be necessary to fully comprehend the invention then answer those questions.

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 stands of the old rationale. The first decision, Ethicon Endo-Surgery, Inc. v. Covidien, Inc., dealt with ultrasonicshears for cutting and sealing a blood vessel… A clear difference between the new “reasonable clarity” standard and the Federal Circuit’s “insolubly ambiguous” formulation is that the latter calls for considerable effort in seeking out a claim construction that comports with the inventor’s manifest intent. The new standard may require the same effort, but that result does not appear guaranteed by the language itself. The entire direction of patent law toward Disclosure World suggests that definiteness will continue to be governed in large part by the meaning drawn from the patent as a whole, not the claim language standing alone.

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 Board (PTAB). Join me for a free webinar discussion – Optimizing Patent Applications: Drafting to Withstand Challenge – on April 19, 2017, at 2pm ET. Joining me will be Joseph Root, author of Rules of Patent Drafting: Guidelines from Federal Circuit Case Law. In addition to taking as many questions as possible from the audience we will discuss: (1) Best practices writing to overcome Alice-based 101 rejections; (2) Identifying the invention/improvement versus KSR 103 concerns; (3) Best practices for ensuring a complete and thorough specification; and (4) Nautilus, means-plus-function and other 112 matters.