Posts Tagged: "how to write a patent application"

When drafting a patent application it is always the best policy to never assume anything. It is dangerous to assume that the reader will fill in any ambiguous holes in the manner you desire, and as here, if what you literally say is clear you run the very real possibility that an assumption on your part will wind up meaning something very different than you intended because you did not take the time to go the extra step to remove all doubt.

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 down far more than one inch deep in order to teach the various nuances of at least the key aspects of the invention. And there are always nuances that can go a mile deep for any and every invention, no matter how simple it may seem to you as the inventor… How do you know how far you need to go? You really should strive to remove doubt and questions from the reader’s mind. While a certain amount of experimentation is allowable, and patents do not need to contain blueprint level detail, ask yourself whether a knowledgeable reader would know from what you’ve written enough to understand your invention without asking additional questions. If answers to additional questions would be necessary to fully comprehend the invention then answer those questions.

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 stands of the old rationale. The first decision, Ethicon Endo-Surgery, Inc. v. Covidien, Inc., dealt with ultrasonicshears for cutting and sealing a blood vessel… A clear difference between the new “reasonable clarity” standard and the Federal Circuit’s “insolubly ambiguous” formulation is that the latter calls for considerable effort in seeking out a claim construction that comports with the inventor’s manifest intent. The new standard may require the same effort, but that result does not appear guaranteed by the language itself. The entire direction of patent law toward Disclosure World suggests that definiteness will continue to be governed in large part by the meaning drawn from the patent as a whole, not the claim language standing alone.

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 Board (PTAB). Join me for a free webinar discussion – Optimizing Patent Applications: Drafting to Withstand Challenge – on April 19, 2017, at 2pm ET. Joining me will be Joseph Root, author of Rules of Patent Drafting: Guidelines from Federal Circuit Case Law. In addition to taking as many questions as possible from the audience we will discuss: (1) Best practices writing to overcome Alice-based 101 rejections; (2) Identifying the invention/improvement versus KSR 103 concerns; (3) Best practices for ensuring a complete and thorough specification; and (4) Nautilus, means-plus-function and other 112 matters.

First, every patent claim needs a preamble, which is the introductory phrase in a claim… Second, every patent claim needs a transition. The most common transitions are: “comprising” and “consisting of” … Third, the first time you introduce a limitation you MUST introduce it with either “a” or “an”, as is grammatically appropriate… Below in an example of an independent claim that applies the above stated three simple rules, which is taken from U.S. Patent No. 6,009,555, titled Multiple component headgear system.

In fact, many times the patentably relevant information is not described as well as largely irrelevant information about marketing strategies and likely consumer demand. Discussion of what makes an improvement better, stronger and faster should take precedent and inventors should consider adding more of this type of information than they are generally accustomed to doing. Keep the puffing for the sales department, the market and consumer demand for your business plan and spend your time in a patent application describing what makes your invention unique from both a structural and functional standpoint.

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.

U.S. patent law requires a patent applicant to furnish at least one patent drawing (sometimes referred to as a patent illustration) of the invention whenever the invention is capable of illustration by way of a drawing. Said another way, whenever a drawing would assist in the understanding of an invention patent drawings, or at least one patent drawing, is necessary.…

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 means the current state of the law is at best a bit murky. But why would you ever want to file a patent application that does not disclose something that you prefer or regard as better? The goal of filing a patent application has to be to completely disclose your invention with as much detail and description as possible, paying particular attention to alternatives and variations. So while you may be able to get away with not disclosing any preferences doing so would likely be a tragic mistake.

One of the biggest mistakes I see inventors make is they spend too much time talking about what the invention does and very little time explaining what the invention is and how it operates to deliver the functionality being described. Many inventors also make the mistake of only very generally describing their invention. If that is you then you are already light on specifics, which is extremely dangerous in and of itself. But the other problem I want to discuss is the flip side of the coin. It is important to be specific, but not just specific.

Don’t be afraid to make the technical disclosure long, dense and difficult to read, at least for those without technical training. In my opinion one of the biggest reasons the Supreme Court has embarked upon this path to render much innovation patent ineligible is because they actually understand the inventions in question. In Bilski, for example it was little more than thinking, observing and acting. In Alice they convinced themselves it was just little more than ledger accounting. Dumbing down the technical disclosure so even a Justice of the Supreme Court can understand is a mistake, at least in my humble opinion.

It is absolutely essential to think outside the box when describing your invention in any patent application. Stop and think about different ways that your invention can be made or used, even if you deem them to be inferior. Failure to disclose alternatives will almost certainly foreclose your ability to argue that those alternatives are covered by your claims and disclosure, which will prevent any issued patent from covering that which has been left out.

Recent Federal Circuit reasoning should make a patent drafter decidedly averse to single-embodiment patent applications, with good reason. Unfortunately, real-world constraints, principally centering on budget and time issues, have resulted and probably will continue to result in the production of a large number of applications in which multiple embodiments either do not exist or do not justify the time and effort to include them in a patent application… In most instances, the addition of a few sentences would have completely cured the cited problems.

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.  Like all claims, method or process claims must completely define the invention so that it works for the purpose you have identified AND it must be unique when compared with the prior art.  By unique I mean it must be new (i.e., not identical to the prior art, a 35 USC 102 issue) and it must be non-obvious (i.e., not a trivial or common sense variation of the prior art, a 35 USC 103 issue). 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.