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 2011 Highlights: Boot Camp for Claim Drafting & Amendment Writing

I’m sitting in this morning on Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing and the first speaker of the day is John O’Brien, Co-Chair of the program and Practice Center Contributor, who provided tips on how to take an effective invention disclosure.  Here are some highlights from the presentation:

O’Brien discussed Engagement Letters and how the letter may minimize allegations made by a client that the lawyer improperly mishandled the matter in question.  He provided a suggested Engagement Letter Checklist that included: 

  • Introduction with general description of matter
  • parties included in representation
  • any additional parties in matter who are not represented
  • specific areas in which representation will be included
  • specific areas which representation will not include
  • establish the expectations
  • detailed payment for services and timing for payment
  • grounds for attorney termination
  • primary responsible lawyer (more…)

10 Mistakes That Will Kill Your Patent in Litigation & How To Avoid Them

Brandon Baum, of Baum Legal and Practice Center Contributor, will be speaking about litigation issues relevant to patent prosecution at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on July 8th in San Francisco.  Brandon shared with us an article he wrote for the Course Handbook entitled 10 Mistakes That Will Kill Your Patent in Litigation And How To Avoid Them. The following is an excerpt from the article:  

It is often said that hiring a litigator to draft a contract results in an iron‐clad contract that no one will ever sign. That’s because litigators learn by seeing how things can go wrong, and shoring things up to prevent that scenario from recurring in the future. We typically get involved when reasonable minds have failed to agree – the joint venture has gone south, the software didn’t perform, or the parties disagree over the scope or value of patented technology. Thus, we have developed a treasure trove of anecdotal evidence of what not to do and we live by the motto “learn from the mistakes of others, as you may not live long enough to make them all yourself.”1


Selected Aspects Of The Impact Of Patent Application Drafting And Prosecution

Louis S. Sorell, Patent Counsel at Google Inc. in New York City, sent in this article he wrote discussing issues that arise during patent prosectuon which may impact subsequent litigation.  Sorell will be speaking at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on June 17, 2011.  The following is an excerpt from the article:


Issues often arise during patent prosecution which impact the course of subsequent patent litigation.  This paper discusses several specific areas in which decisions made during prosecution may particularly impact subsequent litigation.

Claim Construction Issues

A.   Background

With respect to the claim language itself, the words of the claims govern and are generally given their ordinary and customary meaning. The focus of this analysis is “what one of ordinary skill in the art at the time of the invention would have understood the term to mean.” (more…)

Centocor v. Abbott Labs: When Is A Biotech Invention Complete And Ready For Filing?

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

On February 23, 2011, the Court of Appeals for the Federal Circuit in Centocor v. Abbott Labs set aside a $1.7 billion jury verdict in favor of the patentee (Centocor) and held the patent claims at issue were invalid for lack of written description.  This decision reflects a trend of the Federal Circuit in recent years to invalidate patents for lack of written description and offers little guidance as to what is necessary to actually comply with the written description requirements. This case dealt with a somewhat “unpredictable” biotech invention, where there was not an actual reduction to practice of the claimed invention.  In the pharmaceutical fields, it is very common to have method claims directed to treatment of humans and it is very unusual to have had an actual reduction to practice of the method prior to filing the patent application.  However, in this case, the claims were not directed to a method of use, but rather, a new product (antibody).  Based on this and other cases, it appears that the trend of finding lack of written description may become more common in so-called “predictable technologies.” (more…)