Posts Tagged: "claim drafting"

Patent claims define the boundaries of an invention and are meant to state with clarity what the patent protects. Having clearly constructed claims also proves valuable during infringement assertions. These well-known guidelines should be at the forefront of the patent practitioner’s mind when drafting solid-form claims. Patent attorneys practicing in the chemical arts use two primary methods of claiming chemical compounds. The first method relies on chemical nomenclature to describe a claimed chemical compound. Take for example, the drug Wakix® (U.S. Patent No. 7,169,928), in which the active ingredient, pitolisant, is claimed to reference its chemical name without drawing a corresponding structure. The second method claims the drawn chemical structure of a compound. Of course, there are intermediate ways to claim chemical compounds where both names and structure are used to define the scope — especially with genus and sub-genus claims.

To quote a popular saying: “Let’s eat grandpa. Let’s eat, grandpa. Correct punctuation can save a person’s life.” And incorrect punctuation can cost millions of dollars. Do you know when to use a comma versus a semicolon? Do you know how to indent a plurality of elements in a claim? Do you know when to write “patent, copyright, or trademark” or “patent, copyright or trademark”? As Judge David J. Barron said: “For want of a comma, we have this case.”… Although there are no hard and fast grammatical rules, it’s better to err on the side of caution, following rules that courts have recognized.

Drafting a patent application is a complex task that involves dealing with several critical components of the patent application. If one must ask any patent attorney about the crucial aspect of a patent draft, the answer will always be “the claims”. Even the simplest of mistakes in claims can pose risk to a patent application. In light of this, the following article highlights some potential pitfalls to avoid while drafting patent claims.

In order to obtain exclusive rights on an invention, you must file for and obtain a patent. Many inventors will initially opt to file a provisional patent application to initiate the application process, which is a perfectly reasonable decision to make, and will result in a “patent pending” that can even result in a licensing deal. Ultimately, if a patent is desired, a nonprovisional patent application must be filed, and it is this nonprovisional patent application that will mature into an issued patent. U.S. patent laws require that the patent applicant particularly point out and distinctly claim the subject matter which the inventor regards as his or her invention. Any patent, or patent application, contains a variety of different sections that contain different information. Generally speaking, a patent is divided into a specification, drawings and patent claims. Only the patent claims define the exclusive right granted to the patent applicant; the rest of the patent is there to facilitate understanding of the claimed invention. Therefore, patent claims are in many respects the most important part of the patent application because it is the claims that define the invention for which the Patent Office has granted protection.

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 to a granular degree.  Don’t claim a result; claim the steps performed in accomplishing the result. That is, define the software computer program and hardware in discrete steps. Define what’s going on in each step of the computer program code. Go to the level of a software design engineer that annotates their code, to inform others as to what’s going on in the code.  If there is an algorithm claimed, particularize the claims to include the steps performed in implementing the algorithm.

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 certain condition being present. For example, when or if condition X is present, feature Y is implemented or has effect. Without condition X, feature Y may be dormant or have no effect. Patent owners should be cognizant of possible conditional limitations implications because conditional limitations may affect claim validity and infringement as discussed below in the context of recent U.S. Patent Office and Federal Circuit cases. In Ex Parte Schulhauser, the Patent Trial and Appeal Board (“the Board”) held certain claims as unpatentable based on conditional limitations.

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 how successful those responses tend to be. Nothing herein should be interpreted as advice as to how a particular patent applicant should or should not respond to a § 112(a) or (b) rejection. It is instead an overview of the statistical trends surrounding these rejections and a general analysis of the most effective procedural means to overcome them.

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 must be included in the pre-characterizing part. A useful way of thinking about a 2-part claim is that, schematically, the pre-characterizing part, taken alone, is a claim that covers the invention but is so broad that it covers also the closest prior art. This broad definition is followed by a characterizing part that specifies the features that confer novelty to the entire claim. Thus, the pre-characterizing part is is not a definition of the prior art but is a non-novel definition of the invention.

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 in order to overcome the prior art. Method or process claims will include active steps to achieve a certain result. In method claims the transition is typically either “comprising” or “comprising the steps of.” While legally there may be some distinction between these two different transitions, both are acceptable. It is also important to understand that each of the steps in a method or process claims use gerunds, which are a form of a verb that ends in “ing” and operates to direct the action that is to take place.

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 claims and then add very few and perhaps common features to that preposterously broad claim in your dependent claims you are making it easy for the patent examiner to reject the preposterously broad claim and then also reject your barely narrowing dependent claims. Worse, you are left with absolutely no useful information about what the patent examiner thinks might be patentable. You are not in a meaningful position to know what prior art exists that the examiner will later throw at you, and you hardly have any useful basis to talk to the patent examiner.

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 covered over a hundred thousand patent assets pursued by software companies, and for this sample, I found that filing extremely short, overly broad patent claims is a bad strategy in just about every way imaginable.

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 which constitute a major part of their revenue. And the quality of their patents, for sure, is playing a key role in it.

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 patent applications, or more specifically for patent claims. This is true because patent claims must particularly pointing out and distinctly claiming the subject matter invented. Therefore, the use of relative terminology in patent claims should be carefully considered. Traps do await the unwary.