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.

While it may not be the best PLI treatise for those who are partner level, the treatise is easily usable until a patent attorney has several years and several dozens of cases under their belt. For more senior attorneys, or those with the budget for two books, look to Faber on the Mechanics of Patent Claim Drafting, which is the seminal text on everything patent claims.

Like all PLI treatises, How to Write a Patent Application is continuously updated to address relevant Federal Circuit and Supreme Court decision impacting patent drafting. The most recent update occurred at the end of 2012 and includes many updates that take into account recent cases and the new realities of the America Invents Act. Below is a summary of the latest update.

First-to-file system:

Under the America Invents Act, the United States changes from a first-to-invent system to a first-to-file system, effective March 16, 2013. In addition to the obvious need to file as quickly as possible to be ahead of other filed applications, any delays in filing increase the potential for prior art to become available to be cited against the invention. See § 1:5.1.

Oath or declaration:

Patent applications must be filed by the inventors, or by a person to whom the inventor has assigned or is under an obligation to assign the invention. Eventually, an oath or declaration must be filed by the inventors to have a patent issue. The declaration or oath by the inventors need not be filed with the original papers; that can be delayed until prior to payment of the issue fee if there is an application data sheet identifying the inventors. As can be seen from new Exhibit 2-1, the requirements for an inventor’s declaration are now simple. See § 2:3.1, at note 8.

Application data sheet:

It is recommended that an application data sheet be included with the application, as shown in new Exhibit 2-16. An advantage of using this form is that it is a convenient place to identify the inventors and include any priority claims. See new § 2:3.5.

Inventor’s changes to final application:

Occasionally, the inventor wants to change the final application. This can be done, even after the declaration is executed, if the declaration remains applicable to the application papers. Thus, it is permissible to have interlineations, erasures, cancellations, or other minor alterations of the application papers even after execution of the declaration. If there is concern that the changes are significant, the changes can be made in ink and the inventor can initial or date the papers before executing the declaration. See § 4:7, at note 39.

Exclusions from patentable subject matter:

The state of the law with respect to what is excluded as abstract ideas, natural phenomena, or laws of nature remains murky, and the author suggests caution in this area of rapid changes in the case law. See new § 7:2.3[A].

Claim deficiencies:

New discussion of overbroad ranges. See new § 7:6.11. Also, why it is undesirable to have a patent application containing claims with an effective filing date before March 16, 2013, along with claims with an effective filing date after March 16, 2013. See new § 7:6.12.

Specification—support for negative limitations:

Sometimes it is necessary to have a negative limitation in a claim. For example, a claim may be directed to treating a disorder with a particular compound, and distinguish over the prior art with the limitation “without requiring further administration.” A Federal Circuit decision dealing with that limitation (Santarus, Inc. v. Par Pharm., Inc.) suggests that a negative limitation is permissible only where the specification describes a reason for the negative limitation. See new § 8:5.11[S].

Design patent applications:

In a design patent obviousness analysis, the starting point is a primary reference where design characteristics are basically the same as the claimed design. Other prior art can be combined with the primary reference only if the designs are so related that the appearance of certain ornamental features in one design suggests the application of those features to the other (Apple, Inc. v. Samsung Elecs. Co.). See § 10:1.5, at note 30.3.

Patentable subject matter—“abstractness”:

Although it is clear that abstract ideas cannot be patentable subject matter, the courts continue to grapple with the concept of “abstract” in particular cases. See § 14:2.3.

Biotechnology—patentable subject matter:

In biotechnology, method claims and claims directed to naturally occurring substances such as genes are being attacked as directed to nonpatentable subject matter. For example, in Mayo Collaborative Services v. Prometheus Laboratories, Inc., the Supreme Court held that a claim directed to optimizing therapeutic efficacy of treatment of an immune-mediated disorder was directed to nothing more than a law of nature. The PTO has issued guidelines for applying the Prometheus decision. See § 16:3.1, at note 10.1.

Reissue claims:

According to the Federal Circuit in In re Staats, it is permissible to file a continuing reissue application to broaden patented claims beyond the statutory two-year period, even when the continuation claims are broadened in a manner unrelated to any broadening aspect identified within the two-year period. See § 18:4.3, at note 22.1.

Tags: Jeff Sheldon, Patent Applications

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