Posts Tagged: "patent claims"

Patent Claim Drafting 101: The Basics

When writing a claim it is important to describe how the various components are structured and how the various components interact and connect. First, include a claim that defines your invention in broad terms, leaving out any and all unnecessary options. Second, include another claim that defines your invention with as much specificity and with every option you can think of. It does not matter that the claims won’t be in perfect format, with appropriate being defined as the format the Patent Office will ultimately require. At the initial filing stage what matters most is that claims are present and they have appropriate scope, with some being broad and some being narrow and quite specific. By starting to write these two claims you will “bookend” your invention. By this I mean you have disclosed the very broad and generic version of your invention, as well as the highly specified version.

House Subcommittee Pursues Answers to Litigation Abuses by Patent Assertion Entities

The House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet on March 14, 2013, heard from six witnesses that the business of “patent assertion entities” (PAEs) is inflicting severe harm on a broad range of technology users. The witnesses at the hearing agreed that, when confronted PAE demand letters on frivolous claims, settlements by and large are economically unavoidable.

USPTO Seeks Comment on Software Patent Quality

The Patent Office says that each roundtable event will provide a forum for an informal and interactive discussion of topics relating to patents that are particularly relevant to the software community. So will this be a free-for-all whereby everyone with an opinion, even an ill-formed opinion not based in fact, will be allowed time to rip the patent system and software patents specifically? There is no way of knowing what will actually happen at these roundtable events, and while patents don’t generally generate protests I have sneaky suspicion that we may see something that we have never seen before, which is an unruly crowd of protesters. Perhaps I am worrying to much, we shall see.

Patent Law Changes – Claims Unnecessary to Obtain a Filing Date

On Wednesday, December 5, 2012, the House of Representatives passed two bills that are now await President Obama’s signature. The bill — S. 3486— implements both the Patent Law Treaty (PLT) and the Hague Agreement Concerning the International Registration of Industrial Designs. The U.S. Senate previously passed the same bill in the same form on September 22, 2012. Thus, the remaking of U.S. patent law and patent practice continues, and we will see more rulemaking coming from the United States Patent and Trademark Office.

Against the Broadest Reasonable Interpretation of Patent Claims

Even if the BRI rule made sense in 1932—and it is not clear to me that it ever made sense—the rule no longer makes sense. Dramatic changes in the field of patents have undermined even the alleged reasons for the BRI rule. The solution to the problem of the BRI rule is to replace it with the only rule that is natural and makes sense. After 80 years of inventors suffering under the BRI rule, it is time for Congress or the Supreme Court to say: regardless of whether the patent application has been granted, the claims mean the exact same thing. Always.

The Illogic of the Algorithm Requirement for Software Patent Claims

Recently, patent scholar Mark Lemley has renewed attention to software claims under 35 U.S.C. 112, sixth paragraph. Lemley encourages strict application of the algorithm requirement to police software patents and resolve these concerns. Unlike Lemley, I am convinced that the algorithm requirement makes no sense. The problem is not that the concern about broad software claims is unjustified. The problem is that, even if the concern is justified, the algorithm requirement does not solve it. At least, the requirement does not solve the problem in an appropriate way.

Disjointed Patent Claims and the Search for Prior Art

U.S. Patent No. 6,757,068, which relates to what is described as a sourceless tracking system. See AOP Patent Study DEV-1754. The claims of this patent are extremely broad and suffer from defects not associated with prior art. A patent like the ‘068 patent is cat-nip to the anti-patent community and an all too familiar illustration that the Patent Office makes mistakes. Claim 1 is an example of something that would be deemed inappropriate on the patent bar examination because it is horribly disjointed. It should have received a rejection under 35 U.S.C. 112, 2d paragraph.

Patentability Overview: Obviousness and Adequate Description

In a nutshell, an invention would be obvious when someone knowledgable about the area would look at your invention and consider it to be already known; not exactly but rather known if one were to combine several references. In other words, the predictable and non-unique combination of what multiple references teach would yield your invention. The prototypical example is when you have invented A+B. A is known in the prior art, and B is known in the prior art. Upon looking at A and then looking at B, would someone of skill in the art consider A+B to be already known? If the answer is yes, then A+B is obvious. If the answer is no, then A+B is not obvious.

A Primer on Indefiniteness and Means-Plus-Function

The basic law relative to § 112, ¶6 explains that a decision on whether a claim is indefinite under § 112, ¶ 6 requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. Traditionally, claim terms are typically given their ordinary and customary meaning as understood by one of ordinary skill in the pertinent art. The question with means-plus-function claiming, however, is whether evidence from that mythical individual skilled in the art is even admissible. No structure in the specification means the person of skill in the art cannot save the disclosure by understanding. Thus, means-plus-function claims are largely valid at the mercy of a federal judge who in all certainty is not one of skill in the art and who likely has an aversion to such claiming techniques because they prefer dealing with tangible structure.

Patent Claim Drafting: Improvements and Jepson Claims

But how do you go about patenting an improvement? The first thing you must do is figure out what the advantages are over the prior art. You need to take a critical look at your own invention and identify that which distinguishes it over the prior art. You should absolutely focus on structure, not on the method of use. Differences in the method of use will only come into play if you are claiming a new and nonobvious method of using, which is typically not the case. In the overwhelming majority of cases you want to protect the device or apparatus, which makes use differences irrelevant.

USPTO to Hold California Independent Inventors Conference

If you are a serious inventor you need to go to this Conference. Last year there were inventors who came to the USPTO campus for the two-day event from all over the East Coast, and those that I talked to thought it was well worth their time and money. Where else are you going to be able to meet Senior USPTO officials and talk to them one-on-one? There will be patent examiners and trademark examining attorneys present to answer your questions. Local intellectual property attorneys will give their time to participate in teaching sessions, as well as giving free consultations to attendees to answer questions. Even if you have to travel to California and stay in a hotel for a couple nights you will get far more out of the Conference than you will spend. I understand money is tight, but serious inventors, whether they are newbies or old pros, will gain a tremendous amount of valuable information and personal connections by attending the Conference.

Defining the Full Glory of Your Invention in a Patent Application

Unless you are claiming a perpetual motion machine, which based on our current understanding of science is understood to be impossible, you do not need to have a working prototype in order to obtain a patent. In fact, the rules and regulations of the Patent Office do not require a working prototype except when you specifically claim a perpetual motion machine. Given that our scientific understanding is that perpetual motion machines cannot exist, and given that inventors frequently file patent applications claiming perpetual motion machines, the Patent Office does require a working prototype, which will be tested. So if you do not claim a perpetual motion machine the patent examiner will never ask you for a prototype. All you need to do is define the invention in writing, through the use of text and illustrations, so that someone of skill in the relevant technical field would be able to understand the scope of your invention, understand how to make and use the invention, and understand what, if any, preferences you have relative to what you are claiming as your invention.

Drafting Patent Applications: Writing Method Claims

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. Said another way, you must use “ing” words in method claims. You cannot define a method or process in the past tense.

U.S. Patent Office Issues Supplementary 112 Guidelines

Of course, it will be most useful for patent examiners to review and truly internalize the guidelines, but there is some excellent language here that is quite practitioner and applicant friendly. There is explanation of situations where a rejection should be given, but more importantly from a practitioner standpoint will be those examples and illustrations of when a rejection is not appropriate. The discussions of what an appropriate Office Action should include will no doubt be particularly useful as well as practitioners try and hold examiners feet to the fire to provide the type of information required in order to truly appreciate any problems identified by the examiner and how to appropriately respond. Indeed, it is my guess that patent practitioners will be yelling “AMEN” from the top of their lungs as they read various portions of the Guidelines.