Writing a useful and enforceable patent application is not an easy task. A number of articles show how to draft a patent application. For example, Gene Quinn of IPWatchdog published a series of articles with tips to avoid mistakes or pitfalls. Automated software and AI-assisted drafting tools have also become available, but there have been ethical and practical concerns about relying on AI. Instead of discussing the specific details of the steps in writing a patent application or the pros and cons of automated or AI tools, I will focus on the overall strategies or approaches.
Patent claims define the boundaries of an invention and are meant to state with clarity what the patent protects. Having clearly constructed claims also proves valuable during infringement assertions. These well-known guidelines should be at the forefront of the patent practitioner’s mind when drafting solid-form claims. Patent attorneys practicing in the chemical arts use two primary methods of claiming chemical compounds. The first method relies on chemical nomenclature to describe a claimed chemical compound. Take for example, the drug Wakix® (U.S. Patent No. 7,169,928), in which the active ingredient, pitolisant, is claimed to reference its chemical name without drawing a corresponding structure. The second method claims the drawn chemical structure of a compound. Of course, there are intermediate ways to claim chemical compounds where both names and structure are used to define the scope — especially with genus and sub-genus claims.
To protect the inventions that are important to a company’s current and future success, the claims of the patents covering those inventions must accurately define the subject matter that is regarded as the invention and target the right infringers. Drafting claims that accurately define the subject matter that is regarded as the invention requires the crafting of claims to have metes and bounds that precisely circumscribe the subject matter which is regarded as the invention. This can be done by constructing independent claims such that the subject matter regarded as the invention forms the axis around which independent claims are structured. Using this approach, the content of the body of the independent claim is limited to the subject matter that has been identified as that regarded as the invention and any subject matter that is needed to support that subject matter. These subject matter parts are the elements that are needed to accurately define the subject matter protected by the patent. Organizing these elements into patent claim format with the elements recited as broadly as possible provides the fullest measure of protection to which the applicant is legally entitled. This process helps to ensure that those who engage in infringing activity related to the inventive subject matter are implicated by the claim for infringement.
In order to obtain exclusive rights on an invention, you must file for and obtain a patent. Many inventors will initially opt to file a provisional patent application to initiate the application process, which is a perfectly reasonable decision to make, and will result in a “patent pending” that can even result in a licensing deal. Ultimately, if a patent is desired, a nonprovisional patent application must be filed, and it is this nonprovisional patent application that will mature into an issued patent. U.S. patent laws require that the patent applicant particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information. Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the Patent Office has granted protection.
The USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance provides that if an abstract idea represented in one or more claim elements is integrated into a practical application by other limitations in the claim, then the claim as a whole would not be directed to a judicial exception and, as such, would be considered patentable under section 101. The revised guidance states that “a claim that integrates a judicial exception into a practical application will apply, rely on or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” This would seem to be in line with the public policy underlying the judicial exception of not allowing a claim to preempt all means of achieving a desired result. Often, patent claims are drafted such as to contain claim elements directed to desired outcomes as opposed to specific ways of achieving the desired outcomes. Claim elements directed only to desired outcomes have the effect of preempting all ways of achieving the desired outcome, and, as such, are considered to “monopolize the judicial exception”. The public policy behind the judicial exception seeks to prevent the monopolization of the judicial exception by a claim reciting only the desired outcome.