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...]
Writing a patent application
Writing a patent application for an invention requires one to satisfy the written description and enablement requirements.
Browse related articles below.
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...]
Disparaging the prior art in the patent application may narrow patent claims When a patent application disparages a prior art technique, feature, aspect or apparatus, the court may assume that there is a disclaimer of the disparaged subject matter and may then narrow the scope of the claims to exclude the disparaged subject matter if and when the patent application matures … [Read more...]
Bottom line: A claim with a means plus function limitation may invalidate the claim if the claim and the specification are not properly drafted. As such, it may be prudent to avoid language that implicates means plus function such as solely functional language and the operative trigger term “means.” Moreover, this case (Media Rights Technologies v. Capital One Financial … [Read more...]
Bottom line: Patent applications directed to software inventions should be written to disclose the result and the effect of the software, but more importantly, the mechanism of the result or effect of the software. Doing so may increase the odds that the software invention will be considered to be eligible for patent protection. Nevertheless, inventors should be aware that … [Read more...]
Bottom line: The claims of a patent should, if possible, be specifically and separately directed to each one of several entities within a distribution chain such as the end user, supplier, component supplier or manufacturer so that each of these entities can be held liable for direct patent infringement. This may be difficult and not possible to accomplish but it should be a … [Read more...]
Bottom line: When filing a patent application directed to pharmaceuticals, compositions, processes or the like that include ranges (i.e., percentages, quantities or temperature ranges) in the claims, an important patent drafting tip is to include the criticality or purpose of the specified range which may be important in overcoming a prior art reference. In Ineos USA LLC v. … [Read more...]
Bottom line: Under Williamson v. Citrix Online (en banc Fed. Cir. 2015), the Federal Circuit, en banc, lowered the standard back to the pre-2004 standard for when a claim limitation is to be construed as a means plus function (MPF) limitation even when the patent drafter did not intend the claim limitation to be construed as a MPF limitation, thereby increasing the odds that a … [Read more...]