Posts in Patent Drafting


Patenting Antibodies: Written Description Considerations in Antibody Patents

The Amgen v. Sanofi decision put most functional antibody claims into question, including epitope and competitive binding claims, as well as antibody claims based on a newly …
By Li Feng & Stacy Lewis
3 days ago 2

Claimed and prior art ranges must have meaningful difference for nonobviousness

Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed …
By James Yang
1 month ago 3

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 …
By Gene Quinn
6 months ago 2

Patent Drafting Webinar: Trends and Realities of 112 Disclosure Requirements

Join Gene Quinn on Thursday, November 9 at 2:00 PM ET for a free webinar conversation on the trends and reality of 112 disclosure requirements. Gene will be joined by …
By Gene Quinn
7 months ago 0

Patent Drafting: Understanding the Enablement Requirement

The enablement requirement is specifically aimed at ensuring the claimed invention is described with sufficient detail so the relevant person of skill in the art or technology …
By Gene Quinn
7 months ago 13

Patent Drafting 101: Going a Mile Wide and Deep with Variations in a Patent Application

You absolutely want to file a patent application with a description that is a mile wide — that part is good — but you also need to also drill …
By Gene Quinn
8 months ago 2

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 …
By Vladimir Lozan
9 months ago 24

Breadth through Specificity: Supporting Alternative Embodiments with Multiple Examples in Patent Applications

Two recent cases, The Medicines Co. v. Mylan, Inc and Skedco, Inc. v. Strategic Operations, Inc., illustrate that the patentee’s specification is key to determining whether …
By Matthew Kinnier & Emily Dubuc
10 months ago 3

Definiteness and Patent Drafting: The Nautilus Surfaces

Two seminal cases illustrate the techniques of analyzing definiteness in a post-Nautilus world. One case followed Nautilus and the other preceded it, but that case demonstrates what …
By Joseph Root
1 year ago 0

Optimizing Patent Applications: Drafting to Withstand Challenge

Drafting a patent application can be a daunting task, particularly today where virtually every commercially valuable patent will likely be challenged at the Patent Trial and Appeal …
By Gene Quinn
1 year ago 2

Patent Application Drafting: Using the Specification for more than the ordinary plain meaning

As a general rule the ordinary plain meaning of the term as would be understood by someone of skill in the relevant technology area or science will …
By Gene Quinn
1 year ago 0

Federal Circuit Affirms Patent Invalidity and District Court’s Denial of Post-Judgment Motions

The Federal Circuit heard the case on TVIIM, LLC v. McAfee, Inc. A unanimous panel of the Federal Circuit affirmed jury determinations of non-infringement and patent invalidity …

Examining USPTO Business Method Patent Eligibility Examples

On December 15, 2016, the USPTO published three subject matter eligibility examples focusing on business method claims. The purpose of these examples is to give guidance on how claims …
By Kris Rhu & Paul Gurzo
1 year ago 1

Patent Drafting Tip: A comma affects meaning of items in list

The issue was whether the comma in the phrase ", otherwise available to the public" meant that the phrase also modifies the phrase "on sale." If the phrase ", …
By James Yang
1 year ago 4

Flexible problem-solution analysis for drafters with Europe in mind

The problem-solution paradigm has become a cornerstone of patentability in Europe. If the invention cannot be reduced to the format of a technical solution to a technical …
By Brian Cronin
1 year ago 2