Scriptpro LLC v. Innovation Associates, Inc. (Fed. Cir. 2016) is an opinion that provides pointers on how to write a patent application based on a few of the arguments that were presented by the defendant attempting to invalidate the patent, specifically, failure to satisfy the written description requirement. By anticipating these types of arguments, it may mitigate potential … [Read more...]
U.S. patent laws requires that a patent application include a written description of the invention.
In GPNE Corp. v. Apple Inc. (Fed. Cir. August 1, 2016), the written description was presented in a way that narrowly described the invention, and thus the court ascribed a narrow meaning to the terms of the claims and found no patent infringement liability against the defendant. Although the claims define the metes and bounds of what is protected under a patent, the terms of … [Read more...]
Bottom line: Filing a continuing patent application is the best vehicle for broadening patent protection (i.e., patent’s claim), not reissue patent applications. In a broadening reissue patent application, the patent's claims cannot be amended or broadened so as to exclude the primary invention described in the patent application under the ‘original patent’ requirement. In … [Read more...]
In Abbvie v. Janssen (Fed. Cir. 2014), the claims of the patents at issue defined the claimed invention by its function, rather than by its structure. To put it in layman’s terms, it claimed a sports car going 0 to 60 mph within X seconds instead of claiming a V-12 engine having certain technical features that enabled the car to reach 0-60 in so many seconds. Functional … [Read more...]
A patent application is a well-crafted document which has many different requirements for it to be effective. One of the requirements is the written description requirement. The Manual of Patent Examining Procedure states that “to satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in … [Read more...]