Patent Law Practice Center

The Patentability Black Hole

Inventors in the unpredictable arts often have to face an unpredictable paradox when patenting an invention.  There seems to be a disconnect between requirements for an inventor to disclose an invention versus the prior art to render an invention unpatentable. Fenwick & West refer to this as the “patentability black hole”.  In this article, Fenwick & West discuss this dilemma and how to solve this patent law paradox.

An inventor faces a number of significant hurdles and pitfalls in patenting his invention. Having a patent specification providing proper and sufficiently thorough disclosure of the invention being claimed by the patentee can, by itself, be a large hurdle, especially in the biosciences where experimental data is essential. Section 112, first paragraph, of Title 35 of the United States Code sets forth the disclosure requirements that all patentees must meet. This section is commonly interpreted as requiring that a patent specification contain a full written description showing that the inventor was in possession of the claimed invention at the time the patent application was filed (the “written description” requirement) and that a patent specification enable a person of ordinary skill in the relevant field to make and use the invention based on the specification (the “enablement” requirement). See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Company, 598 F.3d 1336, 1340 (2010). (more…)

Navigating the Best Mode Requirement

            The Patent Act provides that the patent specification “shall set forth the best mode contemplated by the inventor of carrying out his invention.”[1]  This requirement, also known as the best mode requirement, is in essence a quid pro quo with the inventor.  In return for granting the right to exclude others from making or using a patented invention, the inventor must disclose or conversely not conceal from the public the preferred embodiment.  But, what constitutes the preferred embodiment, how much information actually needs to be disclosed, what can be withheld and what happens when the inventor is not aware of the best mode?  The recent case law provides some answers to these questions, but also raises other concerns, especially as we enter the brave new era of biosimilars and the inevitable wave of litigation that will likely ensue.

            In order to satisfy the best mode requirement, the inventor must disclose the preferred embodiment of his invention as well as any preferences that could materially affect the invention.[2]  The first step in a best mode inquiry begins, as is always the case with patent law, with the claims.[3]  This past March the Federal Circuit handed down a decision in Ajinomoto Co. v. ITC where the scope of the claims created a problem for the inventors.[4] (more…)

Patent Claim Writing: Insight Into The Drafting Process

Last week, I attended PLI’s Fundamentals of Patent Prosecution 2010 Program: A Boot Camp for Claim Drafting and Amendment Writing in New York City.  I was fortunate to hear an elite panel of experienced patent prosecutors  talk about critical patent application topics.

Amongst the group, was Robert Faber, partner at Ostrolenk Faber LLP and one of our Practice Center Contributors.  He spoke about claim drafting and gave some valuable tips as to how to write a well written claim.  Faber said, ” you want to protect the invention in a claim such that you cover the concept the inventor has in mind and no matter how the particular concept  is executed in years to come.”  Faber advises that you should always describe the concept as broad as possible.

Below is an article Faber passed along, “Patent Claim Writing“, that helps us understand the basics of claim drafting, using a simple example:

United States Patents serve the important national goal of encouraging developments in the useful arts and sciences by granting inventors and their assignees patents that afford a limited time monopoly in their inventions in exchange for their disclosing the invention and how to practice it to the public.  In the patent document, patent practitioners and patent owners= attorneys try to adequately disclose the invention and at least the best mode of practicing the invention sufficiently to enable persons skilled in the art to themselves practice the invention without undue experimentation. 35 U.S.C. ‘ 112, para. 1.  That is the minimal disclosure that must be provided. (more…)