Posts Tagged: Joseph Root patent drafting


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
3 years 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
3 years ago 2

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 …
By Joseph Root
5 years ago 1

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, …
By Joseph Root
5 years ago 2

The Patent Drafting Disclosure Revolution: Don’t Ask Alice

No question exists that patent eligibility under Section 101 has been, and remains, the most active question in patent law. Watching the rapid flow of cases back and …
By Joseph Root
5 years ago 4

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

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

Patent Drafting: Include Alternatives and Variations to Claim Limitations

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 …
By Joseph Root
5 years ago 1

Patent Drafting: The Detailed Description Should Include Multiple Embodiments or Examples

Along with their ABC’s and multiplication tables, patent lawyers learn two basic principles. First, claims define the invention. Second, a court should not read limitations from …
By Joseph Root
5 years ago 7

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