The use of relative terminology, which are short-hand terms that express a certain similarity, are quite common in everyday conversation, but present real and present dangers when used without serious deliberate thought and consideration in a patent application. The use of relative terminology is most seriously problematic in patent claims specifically. This is true because patent claims must particularly point out and distinctly claim the subject matter invented. See Distinctly identifying the invention in exact terms. Therefore, the use of relative terminology in patent claims comes with real risks that must not be taken lightly.
Relative terminology is problematic because certain words that you might want to use are not nearly as descriptive as you might think. The description you are providing by relying on relative terms can leave open the possibility of miscommunication and ambiguity. Ambiguity is the archenemy of patent drafters and must be avoided.
“The innovation that is fostered by a strong patent system is a key driver of economic growth and job creation.” That is how the United States Patent and Trademark Office (USPTO) began the Federal Register Notice announcing the patent quality initiative back in early February 2015. While it may seem like the drive for patent quality is a brand new initiative at the USPTO, the truth is that Director Michelle Lee (pictured, left) has been talking about patent quality ever since she assumed the role of Deputy Director and de facto head of the Patent Office nearly 18 months ago.
On Wednesday and Thursday, March 25 and 26, the USPTO took the first public steps on the road to enhancing patent quality by hosting a Patent Quality Summit at the Office’s main campus in Alexandria, Virginia.
Leading up to the event, I spoke with Valencia Martin-Wallace, who was recently named to the newly created position of Deputy Commissioner for Patent Quality. I asked her about what the Office hoped to accomplish with the Summit.
How to Write a Patent Application is, in my opinion, a “must have” for patent attorneys, patent agents and law students alike. It is a crucial hands-on resource that walks you through every aspect of preparing and filing a patent application, from working with an inventor to patent searches, preparing the patent application, drafting claims and more. I have used this treatise when I teach law school classes on how to draft patent applications. I am a big fan.
The author of the treatise is Jeff Sheldon, who is a partner with Sheldon Mak & Anderson. In addition to being the author of this highly regarded treatise, Sheldon is recognized by California Lawyer as one of the 20 best intellectual property lawyers in the state, he teaches law school, and serves as an expert witness. His presentation of the material makes the treatise unique (in my humble opinion) because it is approachable by those who are new to the material, but also useful for those who have everything up to more advanced levels of experience.
On June 6, 2012, a patent was granted to a small inventor who received assistance with his patent application from a Minnesota pilot pro bono program. Nick Musachio, an independent inventor in St. Paul, Minnesota, turned to the LegalCORPS Inventor Assistance Program after his initial patent application was rejected. With the professional expertise from attorneys at Fish & Richardson, Musachio was granted Patent Number 8157712 – a patent covering a “resistance exercise and physical therapy apparatus”.
This recent development is the first of what is expected to be many instances of small inventors contributing to the nation’s innovation via means of pro bono legal assistance. In the name of promoting innovation and equal access to the patent application process, the America Invents Act provides that the USPTO should “work with and support intellectual property law associations across the country in the establishment of pro bono programs designed to assist financially under-resourced independent inventors and small businesses.” In Minnesota, the LegalCORPS Inventor Assistance Program was co-founded by three Minneapolis firms: Lindquist & Vennum; Meyer & Njus; and Patterson Thuente Christensen Pedersen. (more…)
We are pleased to share the latest from our friends at PatentDocs.org, the Biotech and Pharma Patent Law and News Blog. The authors, Donald Zuhn and Kevin Noonan, are partners at McDonnell Boehnen Hulbert & Berghoff, LLP, and contribute to Patent Docs on a daily basis.
Today’s post is entitled, “IPO Releases List of Top 300 Patent Holders for 2011,” and it reports on the Intellectual Property Owners Association’s recent annual list of the top 300 organizations receiving the most U.S. patents. The article notes that the USPTO stopped releasing an annual list of top patent recipients so as to “discourag[e] any perception that we believe more is better.” It also takes a closer look at the role life sciences companies and organizations play as top patent holders on the IPO’s list. (more…)