Article Of Manufacture Claims for Software Inventions: Should They Be Included in Your Patent?

Burt Magen, partner at Vierra Magen Marcus & Deniro LLP and Practice Center Contributor passed along this article he wrote entitled Article of Manufacture Claims for Computer Related Inventions.  According to Magen, article of manufacture claims can offer advantages over apparatus and process claims, including providing an easier mechanism for enforcement of the patent.  With the knowledge provided in his article, Magen says, “patent practitioners can efficiently draft appropriate article of manufacture claims to more effectively protect software inventions.”  Here is the Introduction:

The software industry is growing and becoming more important to the global economy.  As a result, the number of software patent applications has increased dramatically.  To maximize the value of software patents, it is important that the claims of such patents properly protect the invention.  Typically, software patents include apparatus claims, method claims, and/or article of manufacture claims.  Because of the nature of the software industry, for some inventions the article of manufacture claims may be the most important class of claims.  Yet, many software patents do not include article of manufacture claims or include an incomplete set of article of manufacture claims as an afterthought. (more…)

Written Description Requirement: Ariad v. Eli Lilly

Burt MagenI recently had the opportunity to listen in on PLI’s one hour briefing titled Ariad v. Eli Lilly and the Separate Written Description Requirement. This briefing was conducted by Vera M. Elson, a partner in the international law firm McDermott Will & Emery and Burt Magen, a partner in the law firm Vierra Magen Marcus & DeNiro LLP.  Ms. Elson focuses her practice on intellectual property trial and counseling for her firm’s technology clients.  Mr. Magen focuses his practice on intellectual property counseling and patent prosecution for his firm’s technology clients.

Elson began by explaining that pre-Ariad § 112, ¶1 focused on two underlying purposes behind a separate written description.  The first was Possession:  “The purpose of the written description requirement is broader than to merely explain how to make and use; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar, 935 F. 2d 1555 (Fed. Cir. 1991).  In other words, what you claimed you actually invented.  The second was Meaningful Disclosure: “A patent specification must convey the detailed identity of an invention, thereby serving a teaching function as a quid pro quo in which the public is given meaningful disclosure in exchange for being excluded from practicing the invention for a limited period of time. Univ. of Rochester v. G.D. Searle & Co., Inc. 358 F. 3d 916, 921 (Fed. Cir. 2004).  That is to say, you actually invented what you say you invented and you taught it to us.  But, everything came to a head with the Ariad case. (more…)