A Good Example

A post from our student blogger Sarah Goodman

The latest blog emphasized the importance of incorporating alternatives and variations when drafting patent applications. The purpose of this practice is to produce a higher quality patent application and protect a client against competitors. An additional technique to strengthen a patent is the use of examples. Examples in a patent application are specific embodiments of the invention. Inclusion of examples is not always required by a patent examiner. However, it is good practice to describe different embodiments of the invention especially in the unpredictable scientific fields like chemistry and genetics.

An example is a detailed description of an embodiment of the invention. Examples may include a description of how to make the invention, how to use the invention, and specific details of an embodiment. Specific details such as the temperature at which a reaction was run or compositions from which a product was manufactured can assist in demonstrating enablement of the invention. Increasing the number of examples often broadens the scope of the claims by distinctly pointing out different features of the invention.

There are two types of invention embodiments that can be included in a patent application: prophetic examples and working examples. According to MPEP 2164.02, a working example is based on an experiment that was actually performed. A working example may include testing conditions, usability conditions, specific compositions, and experimental results. A prophetic example is based on predicted results when the experimental work was not yet actually conducted. Prophetic examples may include simulated test results, calculations, and theoretical experiments.

There is a correlation between the need for working examples and the complexity and unpredictability of the field of the invention. Descriptions of example embodiments may be the best way to demonstrate the utility and function of some inventions. Including examples in a patent application can be very helpful in fulfilling the requirements set forth in the MPEP for enablement under 35 U.S.C §112(1). In our MSPL program, we are currently drafting the examples for the patent application portion of our capstone projects.

Alternatives and Variations in Patent Applications

A post from our student blogger Sarah Goodman

In the MSPL classes, we learn that well-drafted patent applications should contain the widest breath possible and appropriate to best protect the client against competitors. When more attention to detail is paid by the patent drafter, more coverage can be granted to the patent applicant. The claims should be written to cover more than just the minimal features of an invention. A good technique is the incorporation of alternatives and variation.

Alternatives are different methods of accomplishing a task. Alternatives can include additional ways an invention can be utilized. Variation is the addition of different configurations, materials, and compositions. Alternatives and variations can be added by the patent drafter which requires creativity and research into the technical field. At least one actual embodiment of the invention must be included in the patent application, but describing the invention usually involves a lot more than just describing one embodiment. Any possible alternatives and variations should be included when preparing and filing patent applications to reduce the ability for competitors to design around the claims.

Variations should be listed even if not the best mode of practicing the invention. If variations are not included in a patent, a competitor company could sell cheaper inferior products without infringing by using the less optimal materials. Variations should include everything that could reasonably work. Another reason to list alternatives and variations is to allow the patent owner to continue improving the invention. If alternatives are not listed that later are discovered by a competing company to be an improvement, that company could obtain competitive patents which block the innovation of the original patent owner.

Listing variations and alternatives is a much cheaper and simpler method of providing broad coverage for an invention than filing more patent applications. The difficulty and expense to list alternatives and variations is minimal when compared to the cost and amount of effort necessary to file additional patents on modifications of one basic idea.

By writing a nonprovisional patent application as our capstone project in the MSPL program, we learn how to use alternatives and variations to increase the broadness and enforceability of a patent application. A broad patent is more valuable to the patent owner and potential licensees. It is the responsibility of the patent drafter to provide a quality patent application.

Patent Profanity – It’s Not What You Think

A post from our student blogger Sarah Goodman

When drafting patent applications, it is important to avoid the use of certain terminology. Some specific words should either never be used or be used with extreme caution. The use of these words is commonly called “patent profanity.” Patent profanity includes words and phrases that cause unnecessary complicated litigation and limit a patent’s scope. These terms should be avoided in the entire patent application, not just the claims. A limiting statement in the specification can be read into the claims resulting in a narrowed scope. Narrowed claims are more easily designed around by competitors causing the patent to be less valuable.

The term “invention” should be used sparingly if at all in a patent application. If the patent application refers to “the invention” as having certain properties or features, these aspects may be incorporated into the claims since the claims identify the boundary of protection for the invention. A statement that seems to describe the invention as a whole by using the term “the invention” is more likely to limit the scope than a statement that describes an embodiment.

Absolute terms are to be avoided in patent applications. Examples include: must, always, necessary, critical, needed, required, and only. These terms are limiting because they are very specific. Describing an aspect of the invention with an absolute term suggests that the invention is not complete without the aspect. Well drafted patent applications should instead include generic language, variations, alternatives, and examples to identify the broadest possible scope of the invention.

The term “prior art” should never be used in a patent application. Characterizing a reference as prior art is an assertion by the applicant that the reference contains comparative material to the invention. References that seem to be related to the invention are required to be cited in the patent application but when referring to the documents, it is best to simply call them references.

A patent practitioner has the job of drafting high quality patent applications and therefore must choose wording that entitles the inventor to the broadest allowable scope of the invention. The right to an invention should not be decreased by poor wording choices in the application. A patent drafter has a responsibility to the client to draft the best application possible. Our MSPL class is learning about the assortment of patent profanities and strategies of avoiding their use while drafting patent applications.