A patent claim has three major sections, namely, a preamble, a transitional phrase, and a body. The body of the claim contains the elements which define the scope of patent protection as defined by that claim. The transitional phrase indicates whether incorporating other elements or components in an accused infringing device other than those elements recited in the body would … [Read more...]
Claim scope negatively impacted due to deleted info from provisional application
The words that one uses in describing the invention in a patent application have significant impact as to the claim scope in any patent that might mature from the patent application. In MPHJ Technology Investments, LLC v. Ricoh Americas Corporation (Fed. Cir. February 13, 2017), a non-provisional patent application which was identical to its corresponding provisional patent … [Read more...]
Functional language invalidates patent claim
In AGIS, Inc. v. Life360, Inc. (Fed. Cir. July 28, 2016), AGIS (patent owner) held a patent directed to a cellular communication system that allows multiple cellular phone users to monitor the location of others and their status via a visual display. Symbols generated on the visual display (e.g., user’s cellular phone) represented the locations of the other users. In the … [Read more...]
Avoid disparaging prior art in patent application
Updated: January 20, 2022 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 … [Read more...]
Claim Drafting Tip: Avoid means plus function claims
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...]
Patent Drafting Tip: Alternative embodiments create prior art
Bottom line: An application for patent generally focuses on the preferred embodiments of the invention but it may be prudent to also include alternative non-preferred embodiments. One reason for including these alternative embodiments is to provide a buffer zone around the preferred embodiments of the invention to prevent others from obtaining a patent on these other … [Read more...]
How NOT to write the background section of a patent application?
The background section of a patent application is supposed to describe the current state of the art. The background section might describe the problem associated with the current technology. For example, the current technology is too slow, too expensive, not easy to use. Your invention might solve one or more of the problems. The best way to write up the background of the … [Read more...]
How to write a broad patent application?
Inventors think that a broad patent (one that covers everything from A to Z) is one that describes the invention in generic terms without describing the particulars of the invention. Inventors will describe their inventions to me by describing the overall goals and the overall mechanisms that achieve those overall goals. Their goal is to influence my writing by describing … [Read more...]