Patent Drafting: Language Difficulties, Open Mouth Insert Foot

The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.

Lately I have been this “educational” mindset more than is usual. Not only am I gearing up for the run of summer PLI Patent Bar Review Courses, which begin [this] week in New York City, but at the beginning of June I will be teaching a Patent Prosecution course for a week at the John Marshall Law School in Chicago, Illinois. What better topic to revisit than the importance of using the right language when describing an invention and dealing with an examiner. Patent attorneys darn near need to be magicians when it comes to language, which is the primary tool of our craft. Picking the right word and the right way to say things is critical. Even more critical, perhaps, is not saying the wrong thing, or worse yet saying something that is clear but not what you intended.

When dealing with the topic of picking and using the right language to describe an invention in a patent application it is worth observing that having a dictionary and thesaurus at the ready is a pre-requisite to being a good drafts-person. If you are not consulting a dictionary and thesaurus you are doing yourself, or your client, a tremendous disservice. But picking the right word is but one of the problems, and probably the easiest to deal with if you train yourself not to assume you have a Shakespearean grasp of the English language and force yourself to consult that dictionary and thesaurus. So today I thought I would focus on a couple big ticket matters that are easy to overlook, at least when patent novices are doing the drafting.

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Patent Drafting: Defining Computer Implemented Processes

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…)

Goeddel V. Sugano: What’s The Difference Between “Envisioning” An Invention And Being “In Possession” Of The Invention?

Gerald M MurphyThe following post was written by Gerald M. Murphy, partner at Birch, Stewart, Kolasch & Birch, LLP and Practice Center Contributor.

In Goeddel v. Sugano, the Court of Appeals for the Federal Circuit (CAFC) has provided more guidance as to what is necessary for a sufficient “written description” of an invention, this time for a true “biotech” invention, in the context of a motion for benefit of priority in an interference.  This case involved two interferences; one directed to DNA encoding human fibroblast interferon (hFIF) unaccompanied by a hFIF presequence (mature hFIF) and one directed to a composition comprising  non-glycosylated hFIF.  Sugano filed a motion for benefit of its Japanese priority application (Sugano priority application) and was granted priority by the Board of Patent Appeals and Interferences (the Board) in both interferences.  Goeddel appealed that decision on the grounds that the Sugano priority application did not constitute a constructive reduction to practice because it did not enable the Counts and did not provide a sufficient written description of the Counts.  The Federal Circuit reversed on the ground that the Sugano priority application did not provide a sufficient written description of the Count because the inventors were not “in possession” of the invention. (more…)