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.
The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.
The United States Patent and Trademark Office is radically updating the Patent Bar Examination starting in April 2011. Since I teach the PLI Patent Bar Review Course that has required John White and I to revise our materials. One of the new things tested will be the recently released 112 Guidelines, which are full of great information and explanation, particularly relating to computer implemented processes; what many would call software. Being the “software guy” one of my responsibilities has been to work on the 112 Guidelines and the Bilski Guidelines for the PLI course. So I thought I would take this opportunity to write, once again, about how to disclose computer implemented inventions to satisfy the disclosure requirements, which are embodied specifically in 35 U.S.C. § 112.
The statutory requirements for computer-implemented inventions are the same as for all inventions. That means that in order to be patentable the invention must meet the patent eligibility test in 35 U.S.C. § 101, the invention must be new (§ 102), it must be non-obvious (§ 103) and it must be adequately described (§ 112). Since the United States Supreme Court announced its decision in Bilski v. Kappos, the United States Patent and Trademark Office has continually urged patent examiners to get beyond the § 101 inquiry except in extreme cases. Prior to the Supreme Court’s Bilski decision many examiners would simply see a computer-implemented method and issue a blanket and rather non-specific rejection asserting that the invention was not patent eligible subject matter under § 101. The USPTO focus on getting past § 101 and to the meat of the invention means that such rejections are no longer the norm. It also means that the Patent Office is pushing the real question about whether an patentable invention is presented into the adequate description space pursuant to § 112. Thus, a thorough and complete description is absolutely essential when your invention relates to a computer-implemented method, whether it is software, an Internet processes or a business method. (more…)
On February 23, 2011, the Court of Appeals for the Federal Circuit in Centocor v. Abbott Labs set aside a $1.7 billion jury verdict in favor of the patentee (Centocor) and held the patent claims at issue were invalid for lack of written description. This decision reflects a trend of the Federal Circuit in recent years to invalidate patents for lack of written description and offers little guidance as to what is necessary to actually comply with the written description requirements. This case dealt with a somewhat “unpredictable” biotech invention, where there was not an actual reduction to practice of the claimed invention. In the pharmaceutical fields, it is very common to have method claims directed to treatment of humans and it is very unusual to have had an actual reduction to practice of the method prior to filing the patent application. However, in this case, the claims were not directed to a method of use, but rather, a new product (antibody). Based on this and other cases, it appears that the trend of finding lack of written description may become more common in so-called “predictable technologies.” (more…)