Yesterday, I attended PLI’s Advanced Patent Prosecution Workshop 2011 in New York where an esteemed panel of experts offered hands-on claim drafting and amendment writing techniques. The program was organized into four technological sections: Biotechnology, Chemical/Pharmaceutical, Electrochemical and Electronics/Computers. I attended the Chemical/Pharmaceutical segment whereJohn Todaro of Merck & Co. discussed advanced issues in drafting of patent specifications.
Here are some highlights from his presentation….
-Draft the claims or Summary of the Invention first, because of the primary role of the patent specification in claim construction
-General Considerations in Drafting the Specification:
- Distinguish invention from the prior art
- Define claim terms
- Provide broadest possible claim scope, while complying with section112 requirements
- Consider ex-US patent law issues
-Control the length of the application – too long = excess fees. Cost issue is important, think about when drafting the application. (more…)
Another great presentation I sat in on today at Fundamentals of Patent Prosecution 2011 was an Introduction to Patent Drafting. The speaker was Willian Frommer of Frommer Lawrence & Haug . Here are the highlights from the discussion:
Frommer suggested that whenever possible, the attorney should interview the inventor to obtain a detailed understanding of the invention and that an attorney’s role is to learn of a specific embodiment of the invention, but also to predict possible alternative embodiments and implementations that may be brought to market. He offered two practice tips: 1) Courts will sometimes limit a claim to a preferred embodiment or even invalidate claims that are broader than the disclosed embodiments. The more embodiments, the better. Try to anticipate competing products that may affect your client’s market and 2) The inventor is often the best source for alternative embodiments. (more…)
Fundamentals Of Patent Prosecution 2011 Highlights: Boot Camp for Claim Drafting & Amendment Writing
I’m sitting in this morning on Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing and the first speaker of the day is John O’Brien, Co-Chair of the program and Practice Center Contributor, who provided tips on how to take an effective invention disclosure. Here are some highlights from the presentation:
O’Brien discussed Engagement Letters and how the letter may minimize allegations made by a client that the lawyer improperly mishandled the matter in question. He provided a suggested Engagement Letter Checklist that included:
- Introduction with general description of matter
- parties included in representation
- any additional parties in matter who are not represented
- specific areas in which representation will be included
- specific areas which representation will not include
- establish the expectations
- detailed payment for services and timing for payment
- grounds for attorney termination
- primary responsible lawyer (more…)
Louis S. Sorell, Patent Counsel at Google Inc. in New York City, sent in this article he wrote discussing issues that arise during patent prosectuon which may impact subsequent litigation. Sorell will be speaking at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on June 17, 2011. The following is an excerpt from the article:
Issues often arise during patent prosecution which impact the course of subsequent patent litigation. This paper discusses several specific areas in which decisions made during prosecution may particularly impact subsequent litigation.
With respect to the claim language itself, the words of the claims govern and are generally given their ordinary and customary meaning. The focus of this analysis is “what one of ordinary skill in the art at the time of the invention would have understood the term to mean.” (more…)
The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.
Lately I have been this “educational” mindset more than is usual. Not only am I gearing up for the run of summer PLI Patent Bar Review Courses, which begin [this] week in New York City, but at the beginning of June I will be teaching a Patent Prosecution course for a week at the John Marshall Law School in Chicago, Illinois. What better topic to revisit than the importance of using the right language when describing an invention and dealing with an examiner. Patent attorneys darn near need to be magicians when it comes to language, which is the primary tool of our craft. Picking the right word and the right way to say things is critical. Even more critical, perhaps, is not saying the wrong thing, or worse yet saying something that is clear but not what you intended.
When dealing with the topic of picking and using the right language to describe an invention in a patent application it is worth observing that having a dictionary and thesaurus at the ready is a pre-requisite to being a good drafts-person. If you are not consulting a dictionary and thesaurus you are doing yourself, or your client, a tremendous disservice. But picking the right word is but one of the problems, and probably the easiest to deal with if you train yourself not to assume you have a Shakespearean grasp of the English language and force yourself to consult that dictionary and thesaurus. So today I thought I would focus on a couple big ticket matters that are easy to overlook, at least when patent novices are doing the drafting.
Click here for the full IPWatchdog article.