Jepson Claiming Improvements

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.

(emphasis added).

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.

(emphasis added).

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).

Deciphering the America Invents Act

President Obama’s signing of the America Invents Act on Friday, September 16th, has instigated an enormous amount of discussion in the patent community and rightly so.   The new law contains several provisions that will become effective within days, as well as others that will require rulemaking and time to implement.  Given the complexity of the legislation, I thought it would be helpful to search the web for analysis of the significant changes to U.S. Patent Law and how it will impact your patent practice.

1. America Invents Act Exercises “Con-Troll” Over Patent Litigation (IPWatchdog)

2. Patent Law Reform Update 2011 (COJK Law firm memo)

3. USPTO Post Grant Cheat Sheet (Patents Post Grant)

4. USPTO Fee Increase Effective September 26TH (Patent Law Practice Center)

5. Major reform of US patent law: the Leahy-Smith America Invents Act (Association of Corp Counsel) (more…)

Advanced Patent Prosecution Workshop: Chemical & Pharmaceutical Claim Drafting

Last week, 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 where Michael Davitz, Partner at Axinn, Veltrop & Harkrider and Practice Center Contributor, discussed Chemical and Pharmaceutical Claim Drafting.  Here are some highlights from his presentation….

  • Development of a Patent Portfolio – patent portfolio is developed in the context of a business plan and where in the life cycle the product is.
  • Generic Player – differentiate product from innovator and create difficulty for competitors, other generics.
  • Innovator – at what stage is the development? Integrate FDA and patent filing strategies and develop patents with an eye towards forcing infringement.
  • Strategies for Early-stage and Late-stage Products
  • Developing a Portfolio of both Listed and Unlistable Patents
  • Start with the end-game and plan backwards (more…)

Advanced Patent Prosecution Workshop: Claim Drafting & Amendment Writing

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:

  1. Distinguish invention from the prior art
  2. Define claim terms
  3. Provide broadest possible claim scope, while complying with section112 requirements
  4. 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…)

Fundamentals of Patent Prosecution Highlights: Claim Drafting & Preparation of Patent Application

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…)