Although many inventors believe otherwise, drafting a patent application is not an easy endeavor. Indeed, the United States Supreme Court has described a patent application as one of the most difficult legal instruments to create. There are a great many pitfalls and perils that face anyone who drafts a patent application, particularly inventors who are not intimately familiar with the patent laws and regulations that will apply.
Attorneys are frequently very good at telling would-be entrepreneurs exactly what they should do, but if you have never been an entrepreneur it can be easy to lose sight of the universal truth that no matter how well funded you may be there is never enough money to afford to do everything that needs to be done. Indeed, even if you carefully plan a budget as an entrepreneur you really have to multiple whatever you think you need by a factor of at least 2 or 3 because things will cost more than you assume even if your projections are conservative. For example, it will come as a shock for many entrepreneurs that the cost of electricity for a business is far greater than the cost of the same electricity for a residential customer.
By employing the Drafting Rules set out above, the drafter expressly sets out the inventor’s intent for claim construction. Previously, a court could look at a single-embodiment specification and decide that the inventor really intended that embodiment to encompass the entire invention. If instead, that specification includes an additional paragraph, setting out several alternatives and variations, as well as expressly stating that the embodiment does not in fact encompass the entire invention, then courts are presented with exactly what they say they are seeking: the inventor’s intent. In Disclosure World, one gets what one discloses. To achieve a desired claim construction, disclose it. Complaining about Federal Circuit decisions accomplishes nothing, and whining does no good. Indeed, there is no crying in patent law.
No question exists that patent eligibility under Section 101 has been, and remains, the most active question in patent law. Watching the rapid flow of cases back and forth between the Federal Circuit and the Supreme Court exceeds the excitement generated by most TV shows in sheer entertainment value. The only question open for discussion is whether we are watching “Game of Thrones,” “Survivor”, or “Modern Family.” Actually, the best choice may be “Lost”.
To understand the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l, a page of history provides more illumination than a book of Lewis Carroll references. Here we need to pick up at the point when everyone thought the computer patentability wars were over.
By the late 1990’s, the last frontier was business methods. We had absorbed Diamond v. Diehr and moved on to Beauregard claims and propagated signals. Everyone was making, or wanted to be making, tons of money in the Dot.Con era, and little patience remained for outdated rules.
Should inventors be going solo and trying to protect their own inventions? No, at least not if you can afford to hire a patent attorney. Going solo through this patent maze would be similar to trying to remove your own appendix. If you can get to a hospital you should not be removing your own appendix! It is that simple. But there will always be inventors who will proceed on their own. Sometimes this is due to hubris, but frequently it is out of necessity.
There is nothing wrong with representing yourself if the choice is between DIY or not moving forward, but for those who will go it alone it is imperative that they become as familiar as possible with the rules, regulations and best practices. It is for these do-it-yourselfers who proceed out of necessity, but with their eyes open, that I write this and other similar articles.
One very common mistake inventors will make is that they will want to only describe their invention in the most general terms possible. Why would you want to be specific, they ask, because if you are too specific it will be easy for people to get around your patent. It is true that an unnecessarily specific discussion of the invention in a patent application can make it easy for competitors to copy your invention without infringing your patent, but if you file an application that only generally, or vaguely, describes the invention that is even worse.
Broad patent coverage results from broad claims, supported by a broad specification. Neither of these factors springs from the invocation of any magic formula. Rather, breadth results from hard, careful work. This section sets out a group of signposts that a drafter can employ to gauge whether she is writing, or has written, a broad patent document.
“Broad” in this context means “broadest supportable” coverage, limited only by the technology in terms of supportability and by the prior art in terms of outer reach. A failure to achieve such breadth is generally attributable to overclaiming, where one runs afoul of the prior art; underclaiming, where the drafter stop short of claiming all he could; or faulty claiming, where the drafter attempts to achieve breadth, but support issues or drafting errors restrict claim scope. Sound principles, instilled by effective training, cannot substitute for adequate knowledge of the prior art. They can provide the knowledge and thus the confidence to claim out to the limits defined by that art.
The most significant obstacle to achieving patent breadth in contemporary patent law lies in the Federal Circuit’s proclivity to import imitations from the specification into the claims. The Court justifies its actions as merely discerning the inventor’s intent to limit the invention. The most effective counter to that activity is claim differentiation—the concept that claims are presumed to have different meanings, so a limitation expressly present in one claim should not be read into another claim, particularly where the narrower claim is dependent upon the broader. The Federal Circuit’s formulation of that rule was well stated in SRI Int’l v. Matsushita Elec. Corp.: “It is settled law that when a patent claim does not contain a certain limitation and another claim does, that limitation cannot be read into the former claim in determining either validity or infringement.”
Courts often express this principle in terms of avoiding claim redundancy. The Phillips court faced that question in dealing with steel-shell panels that can be welded together to form vandalism-resistant walls. The broadest claim included a limitation “internal steel baffles extending inwardly from the steel shell walls.” The court was required to determine exactly what characteristics were implicit in the term “baffles,” and one technique employed for that purpose was an examination of the other claims. For example, dependent Claim 6 recited, “the internal baffles of both outer panel sections overlap and interlock at angles providing deflector panels extending from one end of the module to the other.” “If the baffles recited in claim 1 were inherently placed at specific angles,” the court reasoned, “claim 6 would be redundant.” Thus, a construction of Claim 1 that included a specific angle would be improper, based on the doctrine of claim differentiation.
Patent prosecutors have responded to the Disclosure Revolution in much the same way that clergy and medical doctors responded to the Black Death. Medieval doctors offered incantations and ritual; patent lawyers recite boilerplate. Neither is particularly effective.
Here, “boilerplate” refers to the general disclaimers, caveats, and restatements of aphorisms included in patent applications, for the apparent purpose of warding off evil spirits and narrow claim constructions. Specific disclaimers, as well as alternatives and variations, stand separate from boilerplate. To illustrate the difference, consider the following two statements: “The frammis illustrated in Fig. 3 is not limited to the constructional detail shown there or described in the accompanying text. As those of skill in the art will understand, a suitable frammis can be fabricated from aluminum, stainless steel, or high-density polymer.” And: “Those in the art will understand that a number of variations may be made in the disclosed embodiments, all without departing from the scope of the invention, which is defined solely by the appended claims.” The first, specifically focused, is not boilerplate. The second, often appended to applications, is.
The focus of this particular article is on the disclosure of the invention in the specification. While it is true that the claims will define the exclusive rights that are granted to the patentee, the specification provides the information through which the claims are read. The specification provides the detail that defines what the claims mean, and as the result of a variety of cases over the past few years the specification is becoming an increasingly important part of the patent application. It has always been required and very important, but Courts seem to be marching the United States toward a strict technological advancement standard, which means the technology, mechanics, structure, architecture and environment in which the invention is used really needs to be described with as much detail as possible in order to guarantee that the claims are viewed as covering an innovation and not something trivial or unimportant.
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.
One need not completely panic at the thought, however. Although multiple embodiments certainly should be included whenever possible, techniques are available to provide breadth beyond the minimal terms of a single embodiment. Reading the cases discussed above, it should become clear that the patents involved there not only disclosed single embodiment, but they generally failed to suggest that the claims should cover more territory than the minimal features of the disclosed embodiment. In most instances, the addition of a few sentences would have completely cured the cited problems.
Along with their ABC’s and multiplication tables, patent lawyers learn two basic principles. First, claims define the invention. Second, a court should not read limitations from a single embodiment into the claims, absent a demonstrated clear intention by the patentee to do so.
Don’t believe them.
When the Federal Circuit brings up the principle that one should not import the limitations of a single embodiment into a broader claim, expect the opinion to show how, under the particular, specifically limited facts of the present case, the inventor actually intended to limit the claims to the disclosed embodiment. The decision in Abbott Labs. v. Sandoz, Inc. provides an excellent example of the court’s reasoning. There, the specification described only a single embodiment, but the claims extended beyond the embodiment, but no issues of either prior art of enablement were present. The fact that the patent presented only a single example served as a starting point, after which the court was able to find “clear intent” to limit a broad claim term, “crystalline,” to a particular crystal.