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.
In ScriptPro, LLC v. Innovation Associates, the Federal Circuit recently addressed the sufficiency of a disclosure vis-a-vis the patent claims issued.
The dispute arose when ScriptPro, LLC and ScriptPro USA, Inc. (collectively, “ScriptPro”) sued Innovation Associates, Inc, alleging infringement of claims 1, 2, 4, and 8 of U.S. Patent No. 6,910,601. The district court granted summary judgment for Innovation Associates, holding that the asserted claims were invalid under 35 U.S.C. § 112(a) because the specification describes a machine containing “sensors” and the claims at issue describe a machine that does not need to have “sensors.” ScriptPro appealed and the Federal Circuit, per Judge Taranto (with Judges Bryson and Hughes) reversed, finding summary judgement inappropriate.
Generally speaking, the ’601 patent describes as the invention a “collating unit,” which works with an “automatic dispensing system” that automatically fills and labels pill bottles or other prescription containers. The collating unit has a number of storage positions (e.g., slots) into which containers are placed as they emerge from the dispensing system. The claims at issue do not require “sensors,” although other claims of the ’601 patent do require the use of a “plurality of sensors.”
According to 37 C.F.R. 1.75(e), improvement patent claims should follow a specific template. Rule 75(e) states:
(e) Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
(1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
(2) A phrase such as “wherein the improvement comprises,” and
(3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
Claiming done as Rule 75(e) suggests is known as writing a claim in Jepson format, or simply a Jepson claim. A Jepson claim is one where the preamble makes some kind of statement that relates to the state of the prior art, and then claims an improvement over the prior art. Jepson format allows the patentee to use the preamble to recite elements or steps of the claimed invention which are conventional or known. A Jepson claim is not something that you must employ and it comes with significant disadvantages with only the most nuanced of advantages in very rare circumstances, such as in responding to a double patenting rejection.
When using the format of Rule 75(e), the preamble is considered to positively and clearly include all the elements or steps recited therein as a part of the claimed combination. Therefore, the elements or steps recited in the preamble become a part of the claim and do in fact act as limitations. For more information on patent claiming generally and those claims dealing with Jepson format specifically, see Faber on the Mechanics of Patent Claim Drafting and Advanced Patent Prosecution Workshop: Claim Drafting and Amendment Writing.
Below is an example of a claim in Jepson format, which is taken from claim 6 of US Patent No. 4,892,244:
In a staple cartridge insertable within a surgical stapler and containing staples and comprising an elongated body including one or more longitudinal slots for slidably receiving one or more longitudinal pusher bars comprising a firing mechanism of said surgical stapler, and a plurality of drivers engageable by said pusher bars for ejecting the staples from the cartridge, said staple cartridge releasably fastened to a said surgical stapler, the improvement comprising a lockout mechanism connected to said longitudinal slots for preventing said pusher bars from passing more than one time through said longitudinal slots.
The Jepson preamble in claim 6 of the ‘244 patent (above) is all that comes prior to “the improvement comprising.” That which comes before “the improvement comprising” is describing what is already known in the prior art, a very dangerous thing to do without knowing what prior art the Patent Examiner will use against you.
Here is another example of a Jepson claim, take from claim 9 of US Patent No. 4,007,960:
In a reclining chair having a frame, a back portion, a seat portion, recliner actuator means including means forswinging said back portion between an upright and a reclined position, the improvement comprising elevator means for raising said seat and also tilting said seat forwardly to assist exit from said chair, and power actuated drive means common to both the recliner actuator means and the elevator means for sequentially actuating both the recliner actuator means and the elevator means and being operable sequentially in a first mode of operation to drive the recliner actuator means and operable in a second mode of operation to drive the elevator means, said power-operated drive means comprising an extensible ram which extends in one range during said first mode of operation and in another range in said second mode of operation.
(emphasis added). Jepson claim meets means plus function claiming! Yikes!
The relevant case law on Jepson claims suggests that the preamble elements in a Jepson-type claim are admitted to be prior art. In fact, according to MPEP 2129: “Drafting a claim in Jepson format is taken as an implied admission that the subject matter of the preamble is the prior art work of another.”
Overcoming the admission implicitly created by a Jepson claim is not an easy task and, therefore, Jepson claims should be avoided in all but rare circumstances. Of course, as with all general rules, there are exceptions and circumstances where Jepson format may be useful. One such situation is when the patentee is attempting to overcome, or prevent, a double patenting rejection. For example, when the applicant explains that the Jepson format is being used to avoid a double patenting rejection over the applicant’s own copending application, the implication that the preamble is admitted prior art is overcome. See Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984).
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…)