Patent Law Blog (Patently-O)

Construing the "Function" of a Means-Plus-Function Claim Element

Gregory Baran v. Medical Device Technologies (Fed. Cir. 2010)

Dr. Baran sued MDTech for infringing his patents covering automated biopsy instruments. Soon-to-be Federal Circuit Judge Kathleen O’Malley over-saw the district court case. After construing several disputed claims, Judge O’Malley ordered summary judgment of non-infringement. On appeal, the Federal Circuit affirmed.

Means-Plus-Function: I’ll focus on an interesting question raised regarding Baran’s means-plus-function (MPF) limitation. The limitation reads as follows: a “release means for retaining the guide in the charged position.” 

35 USC 112 p6 provides for MPF claim elements expressed “as a means or step for performing a specified function.”  The statute calls for the limitation to be “construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”  Federal Circuit precedent has logically added that the statutory “corresponding structure” are structures that perform the claimed function.

What is the Claimed Function?: Here, the Federal Circuit was asked to construe Baran’s MPF element to identify the claimed function.  MDTech argued that the claimed “release means for retaining” required a structure that exhibited both a releasing function and a retaining function.  Dr. Baran argued that the claimed function was only that of retaining.  On appeal, the Federal Circuit agreed with the lower court that the means-preamble “release” added a functional limitation to the claim element.

[T]he claim language recites both a release function and a retention function. Dr. Baran’s argument regarding the placement of the term “release” is unavailing. The relevant inquiry is whether the term at issue is purely functional. See Signtech USA, Ltd. v. Vutek, Inc., 174 F.3d 1352, 1356 (Fed. Cir. 1999) (construing “ink delivery means” to be equivalent to “means for ink delivery” because “ink delivery” was purely functional language); Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999) (“[W]hen it is apparent that the element invokes purely functional terms . . . the claim element may be a means-plus-function element despite the lack of express means-plus-function language.”). In the context of the ’797 patent, the term “release” is not an idle description but a vital function to be performed by the means-plus-function element. The patent does not recite a biopsy instrument that retains indefinitely without release; rather, the contemplated function is to retain for the express purpose of producing a spring-loaded release on demand. The claim language ties both functions to the same means-plus-function element, so it is appropriate that the element be construed accordingly.

Although it is difficult to take-away lessons from claim construction decisions, a potential best-practices approach to drafting MPF claims may be to eliminate any adjectives tied directly to the “means.”  Of course, my best practice suggestion is intended for those times when you want to draft MPF claims with clarity.

Bits and Bytes No. 115

Feigelson has created an interesting graph of Jepson Claims.

Bilski: Adding Obvious but Meaningful Limitations

Paul Gardner is PRG's Academic Director. In an e-mail, I asked him whether claim drafting techniques and strategies can be effectively tailored to satisfy Bilski's requirements without sacrificing valuable claim scope. Mr. Gardner says yes it can be done most of the time (and PRG is developing the CLE to tell you how). For Gardner, an important consideration in Bilski is between "meaningful limits" versus "nonobvious limits."

While Bilski requires that process claims recite machine or transformation limitations that "impose meaningful limits on the claim's scope," such limitations need not themselves be new or nonobvious. In other words, "meaningful limits" is not to be equated with "nonobvious limits," and the "meaningful limits" requirement may be satisfied – insofar as Section 101 patent-eligibility is concerned – by machine or transformation limitations which, standing alone, are old or obvious. Once Section 101 patent-eligibility is found to be present, novelty and nonobviousness of the claim as a whole may be satisfied by a novel and nonobvious algorithm in combination with the structural machine or transformation recitations.

This difference is seen in the Federal Circuit's discussion of Abele.

As Chief Judge Michel points out in Bilski, in Abele the CCPA found a broad method claim reciting only data manipulation steps (calculating the difference between two values and displaying the value of the difference) to be patent-ineligible, but found a dependent claim adding only that the data is "X-ray attenuation data produced in a two dimensional field by a computed tomography scanner" to be patent-eligible, because the data represented physical and tangible objects.

My own caution comes from the CAFC's nonobviousness analysis in the 2007 Comiskey decision. In describing that case, I led with the headline "35 USC 101 Finds its Teeth (Biting into Nonobviousness)" because Comiskey could be read to indicate that any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious. Under this reading of Comiskey, obvious but meaningful limitations may overcome §101, but leave the claim extremely vulnerable under §103(a). The Supreme Court's 1978 Parker v. Flook decision follows this same line of thinking – treating a non-statutory (but previously unknown) algorithm "as though it were a familiar part of the prior art."

   

     

     

   

CLE: How to Draft Software Claims under Bilski

In Bilski, the Federal Circuit laid down the law of subject matter eligibility under Section 101 of the Patent Act. To be patent eligible, a claimed process must either: (1) be tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing. In all likelihood, claim limitations focused at general machines such as a "computer" will not be considered tying to "particular machine." Bilski did not, however, decide that question – Bilski's claims were admittedly divorced from any particular machine. On the transformation side, the court provided the example from Abele where graphically displaying "X-ray attenuation data produced in a two dimensional field by a computed tomography scanner" was sufficient transformation. Bilski's claims were essentially knocked-out on the new mental steps doctrine – a process where all the claimed steps "may be performed entirely in the human mind is obviously not tied to any machine and does not transform any article into a different state or thing."

Two additional points: Although the Federal Circuits points to the machine-or-transformation test as the sole test for Section 101 patentability, the court approved two ‘corollaries.’  First, field-of-use limitations continue to be “generally insufficient to render an otherwise ineligible process claim patent-eligible.” Second, "insignificant postsolution activity will not transform an unpatentable principle into a patentable process." (quoting Diehr).  Thus, merely reciting a specific machine or particular transformation will not bring a claim into the realm of patentable subject matter unless the recitation is more than mere insignificant postolution or extra-solution activity.

Going forward, I do not believe that these limitations will have a significant impact on a skilled practitioner's ability to patent software innovations. However, I would like community input on how you might properly claim computer software in a way that avoids § 101 rejections?

Ron Slusky: Five Prescriptions for Effective Analyzing an Invention and then Claiming It

I asked Ron Slusky to share some insight from his new book on patent prosecution and claim drafting. The book is titled Invention Analysis and Claiming: A Patent Lawyer’s Guide (American Bar Association 2007). [Currently $51 on Amazon] Information about the book, including extensive excerpts, can be found at www.claim-drafting.com. 

The following are Slusky’s “five prescriptions for effectively analyzing an invention and then claiming it.”

1. Identify the inventive concept by beginning from the problem that the inventor set out to solve and then asking how, broadly and functionally, the inventor solved that problem

The popular alternative approach of drafting a claim of some indeterminate breadth directed to the embodiment(s) and then whittling that claim down will surely result in a broader claim to the embodiment(s) than what one started with. But that approach may still miss the broad invention because if words defining the inventive concept are not present in the original claim—e.g., a new and non-obvious functional interrelationship—such words are unlikely to somehow magically appear during the broadening process.

2. Begin by drafting a problem-solution statement rather than a claim

As just noted, drafting claims should not be the primary vehicle for discovering the invention. The structural formalisms of claim drafting, while perhaps familiar and facilitating, can all too easily mislead us into thinking we have discovered the inventive forest when we have actually only identified some of its trees.

Begin, instead, by drafting a problem-solution statement and use that as the basis for drafting the patent application’s broadest claims A problem-solution statement is a single sentence stating as broadly as possible, but without reading on the prior art, a) the problem the invention solves, and b) the inventor’s solution to that problem. Here, for example, is a problem-solution statement for a seminal invention of rocket pioneer Robert Goddard:

The problem of enabling a rocket to carry a large amount of combustible material while keeping the weight of the rocket as low as possible is solved by successively feeding portions of the material to the combustion chamber from a separate casing containing the supply of combustible material.

This leads directly to the following claim appearing in Goddard’s U.S. patent 1,103,503 issued July 14, 1914:

A rocket apparatus having, in combination, a combustion chamber, a casing containing a supply of combustible material, and means for successively feeding portions of said material to said combustion chamber.

3. Dream Up Alternatives, Including Some Farfetched Ones

A powerful tool for analyzing an inventor’s embodiment to extract the inventive essence is to dream up some alternatives to the inventor’s embodiment(s), including some alternatives that are farfetched. These are embodiments that, while outlandish or “wacky,” would nonetheless solve the problem to at least some extent. The more farfetched the better. The point is not to claim, or even to disclose, these embodiments in the patent application. The point is that even a farfetched embodiment can solve the problem without involving some of the implementational details required by practical embodiments. Thus dreaming up farfetched embodiments is a way of isolating the essence of the invention from its illustrative implementational details. Thus, for example, envisioning that a touch-tone telephone might have miniature trained parrots to whistle the various tones might be the key to realizing that the idea of using tones to signal from a caller’s premises to the telephone network was not limited to the use of oscillators and physical push buttons, neither of which are used in, for example, web-based telephony systems like SkypeTM.

4. Endeavor to discover “What’s Really Going On”

One way of gaining insight into the breadth of an invention is to ask oneself What’s Really Going On? or—more completely—What's Really Going On to Solve the Problem? The word "really" in this question emphasizes a search for the fundamental problem and the fundamental solution. What is going on really? The exhortation to discover What's Really Going On? invites us to exercise our technological curiosity; to dig down and discover what the invention is accomplishing at its essence; to understand what is going on at the 50,000-foot level; to see the invention in terms of fundamental causes and ultimate effects, without all the stuff in between. Thus answering What’s Really Going On? means figuring out—and ultimately claiming—what it is that solves the problem in at least a rudimentary way—not what solves the problem in the most elegant, efficient or commercially attractive way. Indeed, competitors may sacrifice a measure of elegance, efficiency or even commercial attractiveness in their products if it means being able to get into the market or avoid paying a patent royalty. Or they may devise their own elegant, efficient or commercially attractive implementations. Try to identify what is common among all of the embodiments, including some “farfetched” embodiments that the inventor and attorney may be able to collaboratively dream up, as described above. Identifying that which is common to all of those embodiments provides a good start to answering the question “What’s Really Going On?”

5. Envision the “Opposing Team”—the potential infringer and his patent attorney

When analyzing an invention and drafting claims based on the analysis, do not focus solely on what the inventor has done. Focus, rather, on what some competitor may do that takes advantage of what the inventor has done while avoiding the claims. The Opposing Team will be poring over the claims after the patent issues, looking for limitations that their product does not meet, or for some way to redesign the product to that end. Thus as each word, phrase and structural element appears on the computer screen, the claim drafter should imagine himself to be the Opposing Team and try to think of a way around that limitation, just like the real-life Opposing Team will do. In short, the patent attorney endeavoring to further his client’s interests is aided in that task by taking on the mindset of a competitor’s attorney endeavoring to further his client’s interests.

Buy the Book at Amazon or from the ABA.

Theory of Dependent Claims: Survey Results

Patent claims define the scope of an invention much like metes and bounds define real property boundaries or a statute delineates the difference between criminal and non-criminal activity.  Often, patent applicants submit a series of claims all directed toward the same invention. Various independent claims allow an applicant to focus on various aspects of the invention. These broad aspects may be directed to various nodes of a larger system or regions of a compound, processes for creating or using various elements, etc.  Dependent claims by definition add additional limitations. Thus, for instance disputed claim 1 and 2 from the recent Lovanex dispute reads as follows:

1. A heterogeneous intimate admixture of sulfated heparinic polysaccharides … consisting essentially of

from 9% to 20% of polysaccharide chains having a molecular weight less than 2,000 daltons
from 5% to 20% of polysaccharide chains having a molecular weight greater than 8,000 daltons, and
from 60-86% of polysaccharide chains having a molecular weight of between 2,000 and 8,000 daltons ….

2. The heterogeneous polysaccharide admixture as defined by claim 1, comprising less than 2% of dermatan sulfate.

Claim 2 is interpreted to include all the limitations of claim 1 with the additional limitation of “less than 2% of dermatan sulfate.” See 37 CFR 1.71(c).

Earlier this week, I polled Patently-O readers on why they file dependent claims and received just over 1000 responses. (Listed below).

Theory of Dependent Claims
Why do you file dependent claims?
	Percent of Responses
Answer Options	Strongly Agree	Mostly Agree	Neither Agree nor Disagree	Mostly Disagree	Strongly Disagree	Rating Average
Dependent claims are backup in case the independent claim is rejected in prosecution.	59%	34%	4%	2%	0%	1.51
Dependent claims are backup in case the independent claim is found invalid in litigation.	59%	31%	6%	3%	1%	1.56
Claim Differentiation: The dependent claims expand or alter scope of other claims.	47%	37%	8%	6%	3%	1.82
Dependent claims focus on particular commercial embodiments to make infringement easier to explain to a jury.	29%	44%	21%	4%	2%	2.07
I primarily include dependent claims with nonobvious additional limitations.	19%	45%	25%	9%	1%	2.29
I was taught to draft dependent claims.	26%	34%	26%	8%	7%	2.35
USPTO fees: Patent office does not charge extra for first twenty-claims.	26%	34%	24%	9%	7%	2.36
Dependent structure better supports foreign filing.	7%	19%	58%	11%	3%	2.84
Dependent claims are easier to draft and manage than independent claims.	6%	23%	37%	23%	11%	3.08
Client demands a certain number of claims.	6%	16%	29%	25%	23%	3.42
Dependent claims help avoid restriction requirements.	2%	13%	39%	31%	15%	3.44
A longer application is more valuable.	2%	13%	29%	34%	22%	3.60
					answered question	1029
					skipped question	0

Responses were also allowed to add additional reasons in the comment section. I have compiled a few of those individual responses below.

• Drafting Process: A few responses commented on the iterative process of drafting a patent. For some, drafting the dependent claims helps refocus and redefine potentially problematic terms from the independent claims. For many, the dependent claims also serve as a guide for fully drafting the specification.
• Prosecution Process: Some responses proposed that the dependent claims are helpful during prosecution for several reasons. First, there is a perception amongst patent practitioners that examiners read and consider the claim-set before looking at the actual specification. For that reason, the claims should be considered as a way to teach the examiner about the features and purpose of the invention.  For some, obvious limitations in a dependent claim are useful in that regard to show the examiner an intended use (practical embodiment) of the invention.  For those who see patent prosecution as a negotiation, a series of narrowing dependent claims speed up the the process — the applicant and examiner need only agree upon how narrow the claims need be.  Some propose at least some dependent claims being “super narrow” to serve as a “foot in the door” to increase the likelihood that there is at least some patentable subject matter.  Once you have agreed that a patent will issue, it may be easier to debate the scope of the eventual claims. On a practical note, the existence of dependent claims means that an applicant can get to a post-final rejection allowance without filing a request for continued examination. These practical concerns are important considering that the vast majority of patent applicants amend their claims during prosecution.
• Claim Differentiation: Most practitioners agreed that the claim differentiation benefit of dependent claims is important. The doctrine encourages courts to consider that each claimed element covers something different than the others. Pushing that line, a typical reasoning is that two or more dependent claims providing alternative implementations of a term from an independent claim will help ensure that the independent claim element is not limited to a single embodiment. Some folks quibbled with my statements regarding dependent claims “expanding scope” of other claims and instead used a more PC version of “aiding construction.”  It is important to realize that the originally filed dependent claims also form part of the specification and can thus help overcome enablement and written description hurdles.
• Appeasing Clients: Many inventors see their invention narrowly — as their particular embodiment. Dependent claims provide an easy way to satisfy the inventor’s desire to claim their invention without limiting legal rights. On this “politics” side — dependent claims also give reason to add joint inventors, which may be good for office politics. “An invention may only warrant one independent claim embodiment, but many clients like to see many claims. They believe the more claims they have the stronger the patent and that they are getting value for there money.So you add them, e.g., a blue widget, a red widget. It is like chicken soup for a cold, it can't hurt.”
• Ease of Analysis: “Filing dependent claims rather than only independent claims makes it much easier for several parties (attorneys prosecuting the application, examiners and the BPAI examining the patent, attorneys analyzing the issued patent, courts analyzing the issued patent) to more readily evaluate the differences and similarities of claims.”  Others noted that it is also useful as a way for potential licensees to know that the proposed product is literally and explicitly covered. For some patent owners, this “ease of analysis” is actually a negative. (Try to read NTP’s $600,000,000 claims). A long claim-set makes it more likely that a potential defendant will easily cave rather than pursue an expensive invalidity / noninfringement study.
• Capture “minor inventions”: Dependent claims allow an applicant “to capture improvements to the invention that are not important enough to justify a separate application, but that one would want to avoid having a competitor step in and patent something similar.”
• Tradition: There is nothing wrong with tradition and custom. It helps ensure that we’re all on the same page.  For many the 3/17 rule of independent/dependent claims serves as a default rule that can be adapted for unique circumstances.
• International: Internationally, patents use fewer independent claims than in the US. One European attorney made the following comment: “Multiple independent claims in the US style cause major headaches and costs in Europe, so one good independent, with well gradated dependents, is the best solution for me.”
• I will attach the full comments once reformatted.

New Proposed Rules: Maiming Markush Claims

A new set of proposed rules were published in the Federal Register on August 10, 2007. The new anti-Markush rules would close down a potential loophole in the soon-to-be-finalized claim limitation rules. 

Highlights:

• An intra-claim restriction is proper unless all species share a feature that is substantial and essential for common unity.
• A claim may not incorporate part of the specification by reference unless absolutely necessary.
• Markush alternatives must be substitutable; may not encompass other alternatives; may not be a set of further alternatives; and must not make the claim difficult to construe.

Documents:

• File Attachment: Markush Rules.pdf (96 KB)

Other upcoming finalized rules:

• Rules limiting continuations are expected to be finally implemented within the next few weeks.
• Rules limiting the number of claims being examined are expected to be finally implemented within the next few weeks.
• Rules requiring more extensive IDS submissions are being reviewed by White House staff and are expected to be finally implemented in early 2008.

 

A Dangerous Prosecution Trap

By Paul F. Morgan

I recently retired from a position in which I was also providing legal advice to patent application prosecution attorneys and others.  I had noted the following relatively frequent source of legal confusion in current law for some patent examiners, with the result that some patent prosecutors were being dangerously misled by incomplete examiner rejections. Hence, this warning note.   

A prior U.S. PTO published patent application can qualify as prior art under multiple portions of 35 U.S.C. §102 – resulting in varying effective dates, and requiring different attorney or agent responses. Often, the multiple effective dates are not reflected in examiner rejections.  However, getting a patent application allowed incorrectly can be fatal to the patent’s validity or even lead to inequitable conduct accusations.  Legal misunderstandings of the patent examiner during ex parte prosecution do not create a valid legal excuse for prosecuting attorney legal errors.

A published US patent application has a §102(e) prior art date as of that application's filing date, and also a §102(a) or §102(b) prior art date as of its publication date. The office action rejection should discuss both dates if the publication date was prior to the rejected application.  But, even if the examiner's rejection was legally incomplete, the applicant's attorney must still overcome both, correctly.

If the published application was commonly owned at the time of its invention, a §102(e)/103 rejection can be overcome by asserting common ownership under §103(c).    The protections of §103(c) do not apply to 102(a) or 102(b) prior publications.  Rather, that section only applies to 102(e),(f) and/or (g)!  Furthermore, §103(c) only applies to obviousness issues, not anticipation. Nor does §103(c) eliminate what should have been an alternative rejection for double patenting.  

Obviously, a §102(b)/103 reference from an application publication date more than a year before the subject application date cannot be eliminated, only argued over.   While a §102(a)/103 rejection might be overcome by presenting evidence of an earlier invention date, that avenue is considerably more difficult and dangerous.  In particular, patents obtained via 37 CFR 1.131 declarations of alleged prior invention have a poor litigation record. Where appropriate, 102(a) prior art may be overcome by perfecting a valid priority claim to an earlier application. 

One final related danger that arises from the fact that most U.S. applications are now  published within 18 months of their first filing date.  Even self-publications qualify as 102(b) prior art.  That means that patent applications on improvement inventions from the same client, especially with different or partially different inventors, need to be filed ASAP to avoid prior-filed basic applications from becoming prior art under §102(a) or (b) against the improvement applications [which cannot be avoided by §103(c).]

The above, of course, is oversimplified, and other commentators may wish to “chip-in.” with practical advice.

Notes:

• Paul Morgan recently retired, as the Assistant General Patent Counsel
  for a major U.S. Corporation, after 44 total years of patent practice.

Evidence Based Prosecution I: Sensitivity to Claim Fee Variation

Including Claims in Provisional Patent Applications?

An ongoing debate amongst some patent attorneys is whether to include claims in provisional applications.  According to the rules of practice, claims are not required in the provisional application. (MPEP 601).  However, there are a few good reasons for including claims in the application.

In the wake of Phillips v. AWH, it has become even more important to ensure that a patent’s specification accurately describes the meaning of the associated claim terms.  This task is all but impossible in the absence of any claim terms to describe.   Thus, it is important to draft at least a few model claims with the provisional application.  Some practitioners, such as Russ Krajec, have advocated drafting the claims but then deleting them from the application before filing.  Russ argues that claims in the provisional can only hurt the applicant.

I disagree.  The claims can be helpful in ensuring adequate disclosure and enablement — this is especially true in cases where the provisional is rushed through on a very short deadline and/or low budget.  The claims, as part of the specification, can easily tie together loose ends that may have been created in the rush.  As Todd Mayover aptly points-out, including claims in the provisional creates a clear record associating those claims with the earliest filing date or priority date.  It is also unlikely that patent attorneys would seriously stick to the practice of initially drafting claims that will eventually be deleted — this is especially true in the fast-paced area of provisional applications.  One newfound fear is that including claims in the provisional leaves the patentee open to Festo-type prosecution history estoppel.  However, we have no evidence that presenting new claims in a subsequent nonprovisional would create any such estoppel — especially since the nonprovisional is newly-filed rather than simply an amended version. 

An astute Patently-O reader provided the following comment:

I include at least one extremely broad, never likely obtainable claim in a provisional.  First under US law, it is true that a provisional need not include one in order to be considered valid.  But foreign courts can say otherwise and render the US provisional (if serving as a priority document) invalid in a foreign court. Not including a provisional claim is only useful if you are absolutely certain that you won't go foreign.

I hear the arguments related to the effect of narrowing by amendment as creating PHE.  In the post-Festo world, you can at least explain the amendment so as to overcome the presumption of PHE.  Let's face it, if you are relying on the DOE to win your case anyway and the case rests on whether you started broad and narrowed by amendment, you are fighting a likely unwinnable battle.  In the last 10 years or so, how many DOE cases has the Fed. Circuit actually upheld? Not too many.

No U.S. practitioner has been able to cite a case, rule, regulation, expanded Board of Appeals decision, etc. from a foreign court that has categorically said, "A U.S. provisional application serving as a priority document [to this foreign application] that does not include at least one claim is nonetheless considered a permissible priority document."  Why take the chance of not including a claim in a provisional if there is a likelihood that the foreign counterpart could get knocked out.

Another reason to the include at least a broad claim is that most foreign laws have strict adherence to the rule that the broadest initially presented claim will set the claim scope for the application.  So if you present a very broad claim initially, you can amend narrower.  But if you present a narrower claim first then realize that you can go broader, you cannot amend to go broader.  It is for this reason you can include a "claim" that says something like, "I claim, the product comprising any feature described, either individually or in combination with any feature, in any configuration." or a "process to [...] comprising any process described, in any order, using any modality, ..."

Anonymous

Please leave your own comment below.

Patent Drafting In the Wake of Phillips v. AWH -- Initial Thoughts

In a few months, we will know more about how the en banc Phillips v. AWH decision will be used precedentially.  However, there are a few key points to take-home today. 

1) The game is no longer about careful claim drafting — now, you must carefully draft the entire patent document.* 

2) Be absolutely consistent between the claims and the specification.  A stray modifier of a claim term in the specification can easily lead to unintended consequences.

3) Every word in the claims will be read in the context of the specification.  Therefore the desired scope of every claim term must be fully supported in the specification.

4) Your initial reaction may be to make the ensure that the specification contains no limiting features. — That approach may not be the best.  Your patent will be worthless if it attempts to cover the entire world of technology.  Focused patents that stay within their bounds can be extremely powerful.

5) Give the courts 6–months to sort out some details. — But, set-up a docket reminder for January 15, 2006 for a review of all pending applications to (i) ensure that current claim terms are properly defined within the specification and (ii) whether any preemptive amendments are be in order.

Notes:

• * Of course, you were doing this already.
• University of Pennsylvania law professor Polk Wagner has been writing extensively about claim construction for the past several years.  His thoughtful comments and criticism of my tips are available here.
• Profs Wagner and Joe Miller (Lewis & Clark) have proposed that patent drafters should “leave nothing to chance” and present a glossary of claim terms in the specification.  This “clear thinking” approach would be helpful down the road when you are trying to spot infringers as well. Comment?

 

Patent Tips for a Small Business with Grand Ideas

Many small business owners have thought of becoming more aggressive in protecting their intellectual property rights.  Although attorney's fees are always expensive, patent rights have become more important with each passing year. For many companies, a patent portfolio serves as a type of insurance that has small chance of having a great potential upside. 

Here are a few tips for those getting their feet wet.

1. If someone at your company has an idea that may be patentable, act quickly. You can lose rights by disclosing the idea publicly or by offering it for sale before filing for a patent application.  This type of disclosure can even occur before you make any engineering drawings or working models.

2. Try to keep records that help establish the novelty of the invention and the date of conception.  This evidence may be important at a later date -- especially if there is any delay in filing for patent protection.

3. Before you hire a patent attorney, bone up on the subject -- Read the book “Patents and How to Get One.” It is very short and is a great book to read on your next business trip.

4. Retain a patent attorney to discuss your issues, to help you decide whether to file any patent applications, and then to help with the preparation and prosecution of the patent applications.  Even if you are only filing a single patent application, the relationship with your patent attorney will likely last many years.  Thus, it is important to find a patent attorney and law firm that you can trust and that are comfortable with.  Get references.

5. When thinking about your potential inventions, remember that you can obtain patents on devices as well as methods.  Methods, for example, may include methods of manufacturing an item, methods of doing business, methods of using a device, and process flow methods that describe the flow of data in a piece of software.  (Merely a few examples.)

These tips are valid for almost any company that is starting down the road of patenting.  However, every case is different.  You should raise any concerns with your attorney. 

Once you have applied for several patents, you will then begin to think about patent portfolio management, licensing and other forms of patent enforcement. However, that discussion is for another day.

Patent Drafting Tip: Focusing on the problem

One role of the patent attorney is to help the inventor think more broadly.  One way to accomplish this is by thinking about an "objective" of the invention -- what problem is being solved by the invention?

These days, many practitioners believe that explicitly stating the objectives of the invention is taboo.  However, even if you do not write about the objectives, they should be at the heart of your thinking during the patent drafting process.  Russ Krajec, a Colorado based patent agent has written about his methodology:

I try to focus on the problem being solved by the invention and to include every possible embodiment that could be used to solve the problems of the brand new field. . . . In a crowded field, the problem may be pretty narrow. For example, if the invention was a lower cost version of a common item, the problem solved is cost reduction. By looking at the invention from a ‘problem solved’ standpoint, I can more easily identify other solutions to the lower cost solution. These other solutions give the patent much more commercial value, since it cuts a much wider swatch to protect the basic concept, which is cost reduction.

Krajec notes that his problem-centric approach also helps overcome the potential for easy work-arounds and results in a stronger, more valuable patent. 

USPTO releases notes on restriction practice

A patent generally covers a single invention.  Often, however, a patent application will be filed that arguably covers multiple inventions.  The Patent Office uses Restriction Requirements as discretionary tools to limit the examination of a patent to only one invention.  In order to issue a restriction requirement, the Patent Examiner must find that two independent or distinct inventions have been claimed and that there would be a serious burden on the Examiner to examine the application as filed.

In the chemical practice (TC1600), the patent office has recently taken the initiative to to improve the quality and consistency of restriction practices.  The PTO's 5-step action plan is available online.  Recently, the PTO made the Examiner training materials available on the Web in PDF format.  (Thanks to Steve Hird for the links).

The training materials note that the strongest reasons for restriction involve either (i) separate technology classification; (ii) separate status in the art; or (iii) divergent field of search.

Tip: Reviewing the training materials may be a useful way to avoid or overcome restrictions.  For example, by arguing that claims are "linked," an applicant may be able to persuade the Examiner to remove a Restriction requirement.

Steve Nipper also pointed me to another great resource for responding to restriction requirements: “Amendment and Response in the Mechanical Arts [pdf]” by Brian I. Marcus.

Patent Lawyer: Tips for overcoming 35 USC 102 novelty rejections

The Patent Lawyer is published by the APLF and has released Issue 2.  In an article on patent amendment practice, Stephen Favakeh provides some simple advice for overcoming novelty rejections.  Generally, a novelty rejection is easier to overcome than an obviousness rejection because novelty is determined by more objective standards.  However, when responding to an Office Action, you should not set your client up for an obviousness rejection.

It is usually not enough simply to list the limitations in the claim that are missing from the prior art reference, particularly when the differences are subtle.  Doing so may lead to a dismissal of the Section 102 rejection, but only at the cost of substituting a section 103 [obviousness] rejection. "Sure," the examiner may say, "the prior art doesn't exactly disclose the claimed invention, but it is obvious to fill in the gaps."  To avoid this, explain why the missing limitations are significant.

Deciding whether to appeal a patent rejection

The Patent Office has released a table of results of appeals to the Board of Patent Appeals and Interferences (BPAI) for FY 2004. As you can see, less than half of appeals that reach the BPAI are completely successful. However, this table misses a large number of cases that are appealed, but favorably resolved by the Examiner prior to disposition by the Board.

Disposition	% Decisions Fiscal Year to Date
AFFIRMED	36.0%
AFFIRMED-IN-PART	10.9%
REVERSED	38.0%
PANEL REMANDS	8.0%
ADMINISTRATIVE REMANDS	4.9%
DISMISSED	2.2%
TOTAL	100.0%

On Line Tips for Inventors

From the USPTO main site:

USPTO To Hold Live On-Line for Independent Inventors
Senior officials of the United States Patent and Trademark Office will be available live on line next Thursday, June 10 from 2 to 3 pm (EDT). They will be answering questions and offering tips for independent inventors. Instructions for taking part in the on-line will be posted on the home page of the USPTO website at 10 am (EDT) next Thursday. Inventors can begin logging on for the on-line at 1:30 pm.

The independent inventor on line is part of the USPTO’s continuing effort to promote and protect America ’s independent inventor community. This effort includes educating inventor-entrepreneurs about the risks of working with invention development companies.

Structured Claim Drafting

Stephen Becker has a useful technique for improving the quality of your claims. (Article).

1. List the elements sought to be protected and their interrelationships.
2. Analyze each element asking:

a) Is the element necessary for preserving functionality?
b) Is the element needed to distinguish over the prior art?
c) Can the element be generalized in a way that retains claim novelty?
d) Can elements be combined in a way that retains claim novelty?

3. Review the entire claim, discarding any words not absolutely necessary for functionality or novelty.

According to Stephen:

Sanitizing the wordage, generalizing terminology and combining claim elements will improve the likelihood of literal infringement, because a competitor will find it more difficult to argue persuasively that a claim element is missing, from its competitive product or service.

Patent Litigation: preventive measures

The Douglas J. Kline has a nice article in the Technology Review that outlines a typical patent infringement suit. Kline also gives three tips for preparing for litigation well in advance:

1) Thoroughly and diligently prosecute your patents.
2) Learn about your competition and draft patents that cover competitor's technology.
3) Identify competitor's patents early in your product development and consider design-arounds.

See my earlier posts on claim drafting tips here and here.

Claim Drafting Tips - Patent Quality

One reason that corporations continue to obtain patents is that a strong patent portfolio can alter Wall Street’s outlook on the portfolio holder. During any merger or large acquisition, the associated patent portfolios should be given some review. In some instances, however, the review may simply take the form a Patent Quality Rating. PatentRatings is one company that calculates and sells such ratings. (U.S. patent 6,556,992).

The quality ratings are purely objective and can be based on a number of factors. Here are some tips to increase your rating:
1) Increase the number of claims.
2) Decrease the length of each claim.
3) Increase the length of the specification.
4) File patent as a continuation or CIPs.
5) Vary the type of claims.
6) Cite more references in your IDS.
7) Cite non-patent references or foreign patents.
8) Limit patent prosecution history.

FYI: U.S. Patent 5,583,591 has been identified with an A+ rating.

Claim Drafting Tips

George Wheeler has published an article (pdf) that should be read by anyone and everyone doing prosecution work. Unlike most law review articles, the prose is easy to read and the advice is practical.

Here are some of George’s tips:

1. Write claims that will be literally infringed.
2. Do not rely on means-plus-function claims.
3. Write the specification expansively.
4. Claim in a circle, not a chain.
5. The Examiner is never wrong.
6. Cite the MPEP, not case law.
7. Do not add unnecessary claim limitations.
8. Do not write your opponents’ trial exhibits.
9. Do not just obtain a patent, build a patent position.

Update (April 19, 2004) Read Judge Paul Michel's claim drafting tips or tips on drafting claims from About.com.