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Posts Tagged ‘ written description ’

A Patent Drafting Checklist

Posted: Tuesday, Oct 7, 2014 @ 8:00 am | Written by Joseph Root | 2 comments
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Posted in: Guest Contributors, IP News, IPWatchdog.com Articles, Joseph Root, Patent Drafting, Patents

Here are the chapter summaries for Rules of Patent Drafting: Guidelines from Federal Circuit Case Law. The summaries include 19 pop culture references, and the first ten persons to identify them by email (jroot@qualipat.com) will receive fabulous prizes. You’re on the honor system to work from memory, not Google! To read other installments in the series please see Joseph Root on Patent Claim Drafting.

1. Drafting for Breadth

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.



Patent Drafting: Ambiguity and Assumptions are the Enemy

Posted: Saturday, Sep 27, 2014 @ 8:00 am | Written by Gene Quinn | No Comments »
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Posted in: Educational Information for Inventors, Gene Quinn, IPWatchdog.com Articles, Patent Drafting, Patent Drafting Basics, Patents

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.



Patent Drafting: The Detailed Description Should Include Multiple Embodiments or Examples

Posted: Tuesday, Aug 19, 2014 @ 10:15 am | Written by Joseph Root | 7 comments
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Posted in: Guest Contributors, IP News, IPWatchdog.com Articles, Patent Drafting, Patents

EDITOR’S NOTE: This article is an excerpt from Rules of Patent Drafting: Guidance from Federal Circuit Cases, 2014 Edition, which is now available at Amazon.com. This is the second installment of what is scheduled to be a 6 part series. To read other installments please see Joseph Root on Patent Claim Drafting.

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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.



Patent Drafting: Top 5 Critical Things to Remember

Posted: Saturday, May 31, 2014 @ 9:00 am | Written by Gene Quinn | 25 comments
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patent Drafting, Patent Drafting Basics, Patent Drawings, Patents, Provisional Patent Applications

Drafting a patent application is not easy. A patent application needs to describe your invention completely, and if you really are entitled to a patent then at least some aspect of your invention is new and non-obvious, which means that heretofore it hasn’t existed. Describing something new that has not previously existed if more of a challenge than most people realize.

Many times inventors fail to adequately describe their inventions because the invention is obvious to them, and they think it will be equally obvious to others. The law, however, requires that a patent application explain the invention to someone who is not already familiar with the invention. One of the best way to do this is to explain it like a child explains things when doing a show and tell at school. Children explain everything in excruciating detail, no matter how obvious. Kids do this when they describe things because they have no idea what the person listening knows, and to them it is new and interesting so they explain everything with tremendous detail (whether you want to hear it or not). That is exactly what you need to do in the application. Explain your invention with so much detail that you will bore the knowledgeable reader to death.

That is all fine and well, but how do you explain your invention? Here are five things to keep in mind that are critical in order to fully and completely describe your invention. Thoughtful consideration of these will help you better articulate what you have that is unique in a way that will satisfy legal requirements in the  United States.



Turn Your Idea into an Invention with a Good Description

Posted: Sunday, Sep 1, 2013 @ 7:29 pm | Written by Gene Quinn | 15 comments
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patent Basics, Patent Drafting, Patent Drafting Basics, Patent Drawings

Previously I wrote Describing Your Invention Completely in a Patent Application, which focused on the type of information you want to include to capture the full glory of your invention.  This article is a follow-up to that, focusing this time on what the law requires and why, concluding with suggestions to help in breaking through the idea and getting to something more tangible.  Reading these two articles in conjunction should give a more complete understanding of what is required and how to get from idea to patentable invention.

I start this tale observing a central reality: Inventors are creative people who observe a problem and envision a solution.  Practically anyone can be an inventor because the first step on the path to inventing is the generation of an idea.  Unfortunately, ideas cannot be patented and for many individuals the path to invention stops right there.  But it doesn’t have to stop there.  Frequently you just need some help collecting thoughts and a little push in the right direction.  In fact, many people are surprised by what is required to be an inventor and have an invention that is capable of being patented.

One thing that many individuals and professional inventors employed by corporations (i.e., “kept inventors”) have in common is that they frequently do not perceive what they have come up with as worth patenting.  So many have the idea that a patent is something that gets awarded to breakthrough innovations, when in fact it is far more common to have a patent awarded to an improvement on an existing product.  If you can improve upon something, there is already a market in existence for the underlying product and consumers will perceive your improvement as worth paying for then you very well may have a winning invention.  Certainly, you are much farther along the path to success with that trifecta.



Patent Pricing – You Get What You Pay For

Posted: Saturday, Oct 13, 2012 @ 1:45 pm | Written by Gene Quinn | 15 comments
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Posted in: Educational Information for Inventors, Inventors Information, IP News, IPWatchdog.com Articles

Inventors and entrepreneurs who shop around find that if they take their invention to a number of different patent attorneys they are likely to get a number of different quotes for services ranging from patent searches to patent applications. In fact, you have probably seen the ads on the Internet where a patent attorney or patent agent proclaim that they can prepare and file a U.S. nonprovisional patent application for some ridiculously low price, perhaps as low as $1,400. It is my opinion that there is no legitimate way to adequately prepare and file a nonprovisional patent application for $1,400. In fact, the lowest quotes we typically provide are for between $6,000 to $8,000 plus the filing fees and costs of drawings.  See Cost of Obtaining a Patent.  So why the great disparity? The first thing to understand is that like everything else in life, you get what you pay for. There is just no way to escape that economic reality.

Often times a patent attorney or patent agent will start with drafting a set of claims. In fact, it is probably accurate to say that about 70% of patent attorneys start with the claims. There is nothing wrong with starting with the claims, and there is nothing wrong with starting with the written description, it is a matter of preference really. The claims will be what defines the exclusive rights that are ultimately granted, and many patent attorneys and agents think in terms of claims. The difficulty comes, however, when a set of claims are drafted and then the written description is drafted to match the set of claims crafted. When this occurs the written description is no broader than the claims, which means that there is no support in the written description for anything other than the claims originally filed. This is one way that some bargain basement providers operate, and it can be catastrophic for the unknowledgeable inventor.



Santarus v. Par Pharmaceutical: Rader and Newman Disagree on Written Description Support for Negative Limitations

Posted: Tuesday, Sep 11, 2012 @ 8:30 am | Written by Gene Quinn | 13 comments
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Posted in: Federal Circuit, Gene Quinn, IP News, IPWatchdog.com Articles, Patents, Pharmaceutical

Did Chief Judge Rader mean to create a more strict disclosure requirement to support negative limitations in patent claims?

Last week the Federal Circuit decided the case of Santarus, Inc. v. Par Pharmaceutical, Inc., which dealt with whether a drug covered by an Abbreviated New Drug Application (ANDA) infringed the patents owned by that patent owner relative to the proton pump inhibitors (PPI) product omeprazole.  The big issue in the case is what might at first glance seem to be a rather innocuous statement relative to the support necessary in a patent specification for a negative claim limitation.  But after reading the Newman dissent (which joins in the other aspects of the Court’s decision) it starts to become clear that this could be a much larger issue of significant consequence.

The appeal came to the Federal Circuit from the judgment of the United States District Court for the District of Delaware. The plaintiff, Santarus, Inc., is the exclusive licensee of patents on specified formulations of benzimidazole PPI – a class of chemical compounds that inhibit gastric acid secretion and help prevent and treat stomach acid-related diseases and disorders. The patents are for the inventions of Dr. Jeffrey Phillips, and are assigned to the University of Missouri. Santarus provides the PPI product omeprazole in the formulations covered by the Phillips patents, with the brand name Zegerid®.



Patentability Overview: Obviousness and Adequate Description

Posted: Saturday, Jun 9, 2012 @ 11:57 am | Written by Gene Quinn | 11 comments
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patentability, Patents

There are essentially five patentability requirements. In order for a claimed invention to be patented each of these requirements must be satisfied. The claimed invention must be (1) comprised of patent eligible subject matter; (2) useful; (3) novel; (4) non-obvious; and (5) adequately described. The first three of these requirements were discussed generally in Patentability Overview: When can an Invention be Patented? published last week. This article picks up with an overview of the law of obviousness and what constitutes an adequate description.

The Nonobviousness Requirement – 35 U.S.C. 103

Obviousness is a critical element to patentability. In essence, even if the applicant can demonstrate patentable subject matter, utility and novelty, the patent will not issue if the invention is trivial. In order to determine if an invention is trivial it is necessary to see if there was motivation in the prior art to do what the inventor has done. If the prior art does not explicitly, and with identity of elements, teach the invention, the patent applicant may still be thwarted if there are a number of references that, when combined, would produce the claimed invention.



Turning Your Idea into an Invention

Posted: Saturday, Oct 8, 2011 @ 7:30 am | Written by Gene Quinn | 3 comments
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News, IPWatchdog.com Articles, Patent Drawings

In July I wrote Describing Your Invention Completely in a Patent Application, which focused on the type of information you want to include to capture the full glory of your invention.  This article is a follow-up to that, focusing this time on what the law requires and why, concluding with suggestions to help in breaking through the idea and getting to something more tangible.  Reading these two articles in conjunction should give a more complete understanding of what is required and how to get from idea to patentable invention.

I start this tale observing a central reality: Inventors are creative people who observe a problem and envision a solution.  Practically anyone can be an inventor because the first step on the path to inventing is the generation of an idea.  Unfortunately, ideas cannot be patented and for many individuals the path to invention stops right there.  But it doesn’t have to stop there.  Frequently you just need some help collecting thoughts and a little push in the right direction.  In fact, many people are surprised by what is required to be an inventor and have an invention that is capable of being patented.



Describing Your Invention Completely in a Patent Application

Posted: Saturday, Jul 16, 2011 @ 12:02 pm | Written by Gene Quinn | 8 comments
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Posted in: Educational Information for Inventors, Gene Quinn, Inventors Information, IP News

 

 

An updated version of this article was published on May 10, 2014, which can be found at:

http://www.ipwatchdog.com/2014/05/10/completely-describe-your-invention-in-a-patent-application/id=49497/