Law on enablement requirement A patent specification must enable one of ordinary skill in the art to make and use the full scope of the claimed invention without undue experimentation under 35 USC 112, first paragraph.  Otherwise, such claim is invalid for failing to satisfy the enablement requirement.  The enablement doctrine prevents both inadequate disclosure [...]

The following case illustrates my propensity for limiting my use of what patent attorneys call the means plus function claim limitation.  There are particular uses for means plus function limitations but more often than not, they seem to be more trouble than they are worth.  I will go over some instances where I think that [...]

The following case illustrates the difficulty in being able to predict the outcome of patent litigation.  It also provides hints at improving ones patent drafting technique.  During patent litigation, the claim terms are construed in light of (1) the plain meaning of the terms, (2) the specification and (3) the prosecution history among other things. [...]

Written Description Requirement To get a patent, an inventor must satisfy the written description requirement.  This is accomplished through the preparation of a patent application which describes the invention and shows any drawings if necessary for the understanding of the invention.  To satisfy the written description requirement, the discussion of the invention must correspond to the claims. [...]

Clear claim language is generally the primary goal of claim drafting. In the following case, the claim recited a means plus function limitation. These types of limitations appear to be broad but are limited to the specific structure disclosed in the patent application and linked to the function stated in the means plus function limitation. The means plus function limitation in the patent at issue recited “a release means for retaining” which is confusing because it is unclear whether the function is the release function or the retain function. The Court held that the claim is limited to structure related to both the release and the retain function. Court held: no infringement based on this claim construction. The point of this case is to follow the simple means plus function format of “means” followed by a function, preferably only one function.

The claims section of a patent defines the metes and bounds of what the inventor is claiming as their invention.  As such, the claims section is an important part of the patent. The claim set is the most difficult section of the patent to draft because it is always a balancing act between breadth and [...]

Means plus function language in a claim appears to be a broad form of claiming one’s invention.  However, Congress by statute has limited the breadth of these types of limitations to those embodiments disclosed in the patent application which are linked to the means plus function limitation plus their equivalents.  As a result, the means [...]