Posts Tagged: disclosure


Why Helsinn v. Teva Creates Inscrutable Uncertainty About the Scope of Prior Art Instead of Confirming Longstanding Law

To the casual observer, the Supreme Court’s January 23 decision in Helsinn v. Teva may seem like no big deal. In just a few pages of text, …
By Hans Sauer
7 months ago 18

The Quid Pro Quo – How Bad Patents Can Harm A Startup Company

There are many examples of patents that had virtually no value because the claims were undetectable, unenforceable, or ridiculously narrow. In the process of getting a worthless …
By Russ Krajec
3 years ago 12

Patent Drafting: Define terms when drafting patent applications, be your own lexicographer

Being your own lexicographer means is that you who can define your invention using whatever terms you choose, and after attributing pretty much whatever meaning you want …
By Gene Quinn
4 years ago 0

The Best Mode Requirement: Not disclosing preferences in a patent application still a big mistake

The best mode requirement still exists, although the America Invents Act (AIA) has largely removed any consequences for failing to disclose the inventor’s best mode, which …
By Gene Quinn
4 years ago 6

Patent Application Drafting: Ambiguity and Assumptions are the Enemy

Explaining the function of the invention is helpful, but only explaining something in terms of function leaves many questions unanswered because it is not terribly descriptive. For …
By Gene Quinn
5 years ago 0

Patent Drafting: Getting the Broadest Supportable Claim Scope

'Broad' in this context means 'broadest supportable' coverage, limited only by the technology in terms of supportability and by the prior art in terms of outer reach. …
By Joseph Root
5 years ago 1

Patent Drafting: Employing Claim Differentiation to Ensure Broad Construction

To bring this principle to bear on the problem of claim breadth, consider a patent disclosing only a single embodiment, with a main claim whose scope extends …
By Joseph Root
5 years ago 1

The Software Patent Problem: Not Emphasizing the Technological Contribution of the Innovation

LEMLEY: "People have been writing claims that don’t emphasize the technological contribution of the innovation. And I think that’s part of the problem. And I …
By Gene Quinn
5 years ago 17

Patent Drafting: Broadening Statements vs. Boilerplate Language

Patent prosecutors have responded to the Disclosure Revolution in much the same way that clergy and medical doctors responded to the Black Death. Medieval doctors offered incantations …
By Joseph Root
5 years ago 4

Rules of Patent Drafting: The Disclosure Revolution

The claim drafting wizard is gone, but no one notices that his passing is not a normal, stylistic change, going from gray flannel to bellbottoms to designer …
By Joseph Root
5 years ago 2

Working with Patent Illustrations to Create a Complete Disclosure

What you are looking at here is something that is similar to a Big Mac because it has two beef patties, which are identified by reference numeral 10. …
By Gene Quinn
7 years ago 11

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

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 …
By Gene Quinn
7 years ago 13

Patent Drawings: An Economical Way to Expand Disclosure

While formally compliant drawings are not technically always required at the time of filing, there are significant benefits to submitting professional patent illustrations at the time of …
By Gene Quinn
8 years ago 1

The America Invents Act – Panacea or Just Pain for the PTO?

Many people situated variously within and outside of the patent system of the United States urged the adoption of first-to-file. There are, however, many questions about the …
By Charles Gorenstein
8 years ago 8

Prior Art Under America Invents: The USPTO Explains First to File

If (B) gives a blanket exclusion to subject matter, which cannot be used as prior art after a disclosure by an inventor, that would lead to nearly …
By Gene Quinn
8 years ago 13