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 invention 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...]
Expedited examination at the USPTO
The following petitions for expedited examination and accelerated examination, programs and techniques are available to applicants to reduce average prosecution pendency at the Patent Office. They are used to cut to the front of the line instead of waiting on a first come-first served basis, reduce misunderstanding that might cause the examiner to reject the application, and … [Read more...]
Design patents: pros and cons
Basic types of patents Three types of patents are issued by the United States Patent and Trademark Office. 1. Utility patent; 2. Design patent; and 3. Plant patent (not discussed here). Basic differences between utility and design patents Each of these types of patents cover different aspects of an invention. Utility patents protect functional features. Design … [Read more...]
Broad claims pose enablement issues
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 of an … [Read more...]
Request for non-publication of a patent application
Non Publication Requests A non publication request is a request by the patent applicant to not publish a non provisional patent application. By default, every non provisional patent application is published 18 months after the filing date of the patent application. The non publication request prevents the publication. Benefit of publication The benefit of publication … [Read more...]