Posts Tagged: "patent 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 to a granular degree.  Don’t claim a result; claim the steps performed in accomplishing the result. That is, define the software computer program and hardware in discrete steps. Define what’s going on in each step of the computer program code. Go to the level of a software design engineer that annotates their code, to inform others as to what’s going on in the code.  If there is an algorithm claimed, particularize the claims to include the steps performed in implementing the algorithm.

A Primer on Indefiniteness and Means Plus Function

Means plus function claiming allows the drafter to claim the invention based on functionality rather than the more traditional (and preferred) claiming technique that employs structure within the body of the claim itself… If there is no structure in the specification the person of skill in the art cannot save the disclosure by understanding what the drafter intended to be covered by the means plus function limitation in the claims. Thus, means-plus-function claims are valid at the mercy of the specification, and only to the extent that the specification contains support for the structures that define the means… The Federal Circuit does not blindly elevate form over substance when evaluating whether a particular claim limitation invokes means treatment. See Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) (“We do not mean to suggest that section 112(6) is triggered only if the claim uses the word ‘means.’”).

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 certain condition being present. For example, when or if condition X is present, feature Y is implemented or has effect. Without condition X, feature Y may be dormant or have no effect. Patent owners should be cognizant of possible conditional limitations implications because conditional limitations may affect claim validity and infringement as discussed below in the context of recent U.S. Patent Office and Federal Circuit cases. In Ex Parte Schulhauser, the Patent Trial and Appeal Board (“the Board”) held certain claims as unpatentable based on conditional limitations.

The Immunotherapy Patent Landscape: Types of patent claims for immunotherapeutic inventions

Immunotherapy has emerged as one of the most promising mechanisms to combat diseases like cancer and microbial infections. Since 2000, multiple antibody drugs have reached blockbuster status, including the anti-TNF antibodies adalimumab and infliximab, the anti-CD20 antibody rituximab, the anti-VEGF-A antibody bevacizumab, and the anti-HER-2 antibody Trastuzumab. In 2016, five of the top 10 pharmaceuticals were antibody drugs, with combined sales exceeding $45.8 billion. The cancer immunotherapy market is expected to reach nearly $120 billion… The promise of immunotherapy as a treatment option has opened up the intellectual property landscape of the field. Many companies and institutions have filed patent applications related to the various drugs and targets… The claim language in a patent is crucial to the effective protection of the invention, and the balance between breadth of the claims and validity is a difficult one to achieve.

Patent Strategy: Advanced Patent Claim Drafting for Inventors

Today we pick up our series with discussion of some advanced patent claim drafting strategies for inventors and others new to the art of claim drafting. Sometimes those who draft patent claims get a little too cute for their own good. What is it that you are trying to accomplish? Are you trying to get the broadest claim that you can possibly obtain? If that is your goal you will probably be rather disappointed with your efforts even if you are successful. Today it is very easy to challenge issued patent claims, indeed easier than ever before. That means your goal has to be to obtain the broadest valid claim possible, not just the broadest claim that you can sneak by a patent examiner.