Posts Tagged: claim drafting
Patent Practice Training: An Introduction to Patent Prosecution
You’ve passed the patent bar exam. Now what? Having a license to practice is just the beginning. What you need is a bridge between passing the …
Software Patent-Eligible Subject Matter: Claiming Improvements in Computer Functionality
Particularize the claims. This helps overcome the “abstract” part of a 101 rejection. Put details into the claims to define the steps performed in the software and hardware …
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 …
§ 112 Rejections: Where They Are Found and How Applicants Handle Them
In this article, we will explore both § 112(a) and § 112(b) rejections by taking a look at where they are most common, how applicants respond to them, and …
Comparing and Contrasting European 2-part claims with US Jepson claims
European practice requires a strict distribution of the features before and after "characterizing", where those prior art features that are common with the definition of the invention …
Drafting Patent Applications: Writing Method Claims
Method or process claims are relatively easy to write once you know what the core invention is and what is necessary to be included in the claim …
An Introduction to Patent Claims
The examination you receive from the patent examiner is never going to be any better than the patent claims you provide. If you provide preposterously broad patent …
Pursuit of Extremely Short Patent Claims
Dear Patent Attorney, Please stop filing extremely short, overly broad patent claims. I recently conducted a study to measure the effectiveness of various prosecution strategies. The study …
How to Get Broader and Good Quality Patents
Patents, for a long while, have been an integral part of business development strategy. Companies like ARM and Qualcomm, for example, have built their business around patents …
Patent Drafting: The Use of Relative Terminology Can Be Dangerous
The use of relative terminology, which are short-hand terms that express a certain similarity, are quite common in every day conversation, but are not always appropriate for …
Was the Federal Circuit Trying to Save Us from Ourselves in Williamson v. Citrix?
In Williamson v. Citrix, the Federal Circuit overruled its own precedent that there is a “strong” presumption that claim limitations that do not use the term “means” …
Functional Claiming of Computer-Implemented Inventions in View of Recent Decisions
The opinion focused on whether adequate structure corresponding to the “coordinating” function is disclosed in the specification. After determining that a special purpose computer is required to …
What makes a patent valuable; A patent broker’s perspective
In a recent article Toxic Asset, we explained in detail how much recent court decisions and new rules at the USPTO had negatively impacted the value of …
The Disclosure Revolution – A Report from the Front, 2014
The Disclosure Revolution is an ongoing process that has transformed patent law over the last couple of decades. While courts continue to say, “The claims define the …
A Patent Drafting Checklist
Drafters need to think both outside and inside the claims. Outside thinking aims to make the court’s task easier by providing claim terms amenable to straightforward, …
