Last month the seminal PLI Treatise, Mechanics of Patent Claim Drafting, was updated with information on claim drafting tips and techniques post Bilski, and a few other juicy items. Long time aficionados of the treatise will recall that this treatise was once upon a time called Landis on the Mechanics of Patent Claim Drafting, or simply the Landis Treatise. Landis has long since been deceased, and Robert C. Faber of Ostrolenk Faber LLP has been updating the text for many years now. About a year or so ago, PLI decided to change the title from Landis to Faber. It is the same great text that we are all familiar with, but now Robert Faber gets the credit he has been due for so many years. And in keeping with the times, it is also now available on Kindle through Amazon.com.
In this release, author Robert C. Faber updates and expands his treatise with practical information and commentary on a variety of issues affecting patent claim drafting. Among the topics covered are the following:
- In re Bilski: In In re Bilski, decided October 30, 2008, an en banc panel of the Federal Circuit overruled much of its previous jurisprudence related to business methods or processes and computer-implemented processes, including computer software. The new test for patent eligibility is simply stated, if not apparently always simple in its application: A claimed process is patent-eligible under section 101 if (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. A new section discusses the court’s analysis, the precedents that are overruled, the implications of the case, and some post-Bilski decisions of the Board of Patent Appeals and Interferences. See new § 4:9; see also §§ 4:10, 4:11.
- Double patenting: Double patenting is outside the statutory classes of what is patentable. It occurs when a claim in each of two patents by the same entity is so similar that the right to exclude granted by a first patent is unjustly extended by the grant of a later patent. There are two types of double patenting, one based on statute and the other a judicial creation. See § 1:3, at note 29.
- Transition terms—“comprising”: Although “comprising” raises the presumption that a list of elements following that transition word is nonexclusive and may include other elements, to infringe the claim, every recited element must be present, meaning that the open transition does not permit an accused method or device to infringe if one of the recited elements is absent. See § 2:5, at note 56.1.
- Singular and plural elements: The singular form “a” used in conjunction with “comprising” and without narrowing language typically encompasses both singular and plural possibilities, if there is no expression of intent in the claim, the specification, or the prosecution history to limit the element to a singular form. See § 3:11, at note 168.1.
- Means-plus-function element: In Welker Bearing Co. v. PHC, Inc., the Federal Circuit held that in a claim, “mechanism,” like “means,” is a word that does not connote structure, so its use in a claim element creates the presumption the element falls under section 112, paragraph 6. In addition to “means” and “mechanism,” other terms will probably be construed as elements under section 112, paragraph 6 in the future. See § 3:29.8, at note 403.1.
- Product-by-process claims: While a product-by-process claim includes the process by which the product is made as an element of the claim, a product claim which does not specify a process by which the claimed product or claimed element is made is not to be construed as covering only that product or element made according to the process disclosed in the specification, absent such a limitation in the disclosure or reliance upon the method of production to distinguish the product from the prior art. See § 5:2, at note 30.1.
- Generic and species claim: For a claim in an application being examined, as the specification identified only one effective compound (for combating a form of cancer), the Federal Circuit held that the claim that claimed a genus of compounds was unpatentable under section 112, paragraph 1, for lack of written descriptive support for the genus of antibodies claimed, because other species might have differing degrees of efficacy (In re Alonso). See § 6:9, at note 87.1.