January 23, 2013
Westlaw Journal Intellectual Property
Authored by Anthony J. Lombardi
Writing a patent application involves assembling complex technical information in a format unlike typical written works. The process can cause drafters of patent applications to prepare them solely from a technical perspective. But after a patent application becomes a patent, and if the patent is litigated in a district court, a judge will ultimately interpret the scope of protection it affords, and a jury will decide whether it is infringed and valid. Taking these audiences and some litigation-related issues into account when preparing patent applications can produce patents that are well positioned in later litigation.
Claim construction, typically decided after a Markman hearing, pursuant to Markman v. Westview Instruments, 517 U.S. 370 (1996), often influences the outcome at trial. The judge interprets the meaning of words in the claims of a patent, and patents with clear support for the meaning of claim terms in their specifications provide a claim‑construction roadmap for the judge.
If a claim term is not clearly defined in the specification (which is part of a patent's intrinsic evidence) the judge will consider other sources, called extrinsic evidence. Extrinsic evidence may include dictionaries and expert opinion. But leaving claim-construction issues to extrinsic evidence introduces uncertainty into the entire process. Each side of the dispute may point to a different dictionary, and each dictionary may include multiple meanings for the same term. Opposing experts will offer the judge conflicting viewpoints to reconcile differing definitions. Therefore, including clear intrinsic evidence in a patent application can help avoid these uncertainties.
Patent practitioners should prepare a draft of the claims early in the application-drafting process. Drafting claims before the specification may seem counterintuitive. After all, the claims section appears at the end of the application. But there are advantages to preparing an initial draft of at least some of the claims before writing the specification. First, drafting claims forces the drafter to focus on the important aspects of the invention. Second, as part of that process, the drafter must select claim terms early in the process. Having selected those terms, the drafter can then build proper support for them in the specification.
The drafter should use clear and concise claim terms. Each word of a claim imparts meaning to the claim. Claims with more words are more open to interpretation and provide more opportunities for an opponent to place limitations on the claim. A drafter should carefully consider whether each word of the claim is necessary to express the desired subject matter. If words are not needed to achieve the desired meaning, the drafter should delete them.
A savvy drafter uses claim terms consistently. Once the drafter selects a term to represent a particular thing, the drafter uses the term consistently throughout the claims and the specification when discussing that thing. Using different terms to refer to the same thing in the specification will inevitably lead to uncertainty when interpreting the claims.
A drafter should consider whether to include specific definitions of claim terms in the specification. In some fields, the meaning of a particular term may evolve over time, and tomorrow's meaning may differ from today's meaning. Some fields may use multiple terms to refer to the same thing, and the use of a particular claim term may not necessarily establish a desired meaning. If a claim term is not defined, and multiple meanings exist for it, its meaning is left open to dispute. Defining claim terms in the specification can help ensure that the intended meaning is clearly reflected in the intrinsic evidence.
When drafting an apparatus claim, drafters should consider whether the claim includes functional language and, if so, revise it to make the functional language non-limiting. Functional language describes what the structure does, not what the actual structure consists of. A claim that includes functional language may require an accused structure to actually perform the described function in order to infringe. By including "configured to" or "capable of" language in the claims preceding functional language, the claim will no longer require the structure to have actually performed the function to infringe.
Further, drafters should avoid claiming an embodiment using only method claims. These claims raise additional issues in an infringement analysis. To show infringement of a method claim, the patentee may need to show everything needed to prove infringement of a corresponding apparatus claim plus provide additional evidence that the claimed method has actually been performed. Including additional non-method claims corresponding to the subject matter of the method claims will provide opportunities to demonstrate infringement without this additional proof.
For example, for a computer-related invention, the same claim scope may define a method, an apparatus and a tangible computer-readable medium that stores instructions to implement the method. The apparatus and computer‑readable medium claims will not require a showing that the method has actually been performed and thus will require less evidence to prove infringement than the corresponding method claim.
The careful drafter will include meaningful, dependent claims and look for opportunities for claims to build on each other. Having several dependent claims build off each other (e.g., claim 2 depends on claim 1, claim 3 depend on claim 2 and claim 4 depends on claim 3) provides fallback positions for validity. If the independent claim does not survive a validity challenge, the other dependent claims may provide subject matter that withstands the prior art.
Additionally, the drafter should use dependent claims to further define claim terms in the independent claims. Claim differentiation is the principle that an independent claim does not require something described more specifically in a dependent claim. If a dependent claim requires a claim term to have a particular limitation, that particular limitation is not a requirement of the claim term in the independent claim. Dependent claims that further limit claim terms found in independent claims can demonstrate that the independent claim terms have a broader scope, which can be useful evidence for claim construction.
The detailed-description section provides an opportunity to teach the reader about the invention and to provide the reader with the background needed to understand the claims. The detailed description should explain the invention fully and avoid introducing uncertainties and constraints that could affect claim construction or unduly limit the claims.
The drafter should begin the detailed-description section with an overview of the invention. This will help the reader understand what the invention is all about. The description should precede a discussion of the first figure and should avoid low-level technical details. Instead, the drafter should first provide a high-level and understandable description of the invention in plain English and explain what the invention is and how it works.
After the overview, as each figure is described, the drafter should explain concepts that nontechnical readers may not otherwise fully understand. Although patents do not need to describe concepts understood by one of ordinary skill in the art, the reader may not have the background of one of ordinary skill in the art. Nontechnical readers may read dense technical explanations and fail to understand the invention or even misunderstand the invention. Instead, the drafter should develop explanations that summarize and explain technical concepts that one of ordinary skill in the art might already understand to help nontechnical readers understand the invention.
The careful drafter will include definitions and support for the claim terms identified when preparing the claim terms. As in the claims, it is equally important to consistently use claim terms in the detailed description.
The drafter should avoid using language that might limit the scope of the claims to specific examples or embodiments. The first step in avoiding placing undue limits on claim scope is to avoid using the word "invention." Descriptions that tie features to "the invention" may limit claim terms to those particular features. Instead of referring to "the invention," the description should discuss "embodiments." The next step is to avoid using any words that require (or do not require) certain things (e.g., necessary, essential, must, always, never) and any words that labels things as more significant (e.g., important, critical, key, vital, crucial, prefer) than other things. Similarly, the drafter should avoid limiting the description to a particular embodiment or characterizing an embodiment as better (or worse) than another embodiment.
The drafter should include support in the specification for future implementations of the invention. Alternatives not yet efficient or practical today might become important tomorrow. The drafter should provide support for claim terms encompassing other foreseeable alternatives not implemented today and should consider including dependent claims specifically identifying these alternative implementations.
Readers are accustomed to starting from the beginning when reading a document, and that habit often carries forward when reading a patent. After looking at the cover page and flipping through the drawings, the reader will likely turn to the background section. This section provides an opportunity to inform the reader what kind of technology the invention is and to educate the reader why the invention provides a meaningful improvement over prior-art technology.
The drafter should first identify the subject matter of the invention and then explain existing technology and its drawbacks. Identifying the subject matter of the invention in an understandable way will help to quickly orient the reader. Explaining how existing technology works and identifying the drawbacks of current solutions will help establish that the invention accomplishes a goal and that the goal provides value.
The drafter should avoid discussing the invention in the background section. The background section explores admitted prior art and if claimed features appear there, establishing the novelty and nonobviousness of those features may become more difficult. Discussing the invention in the background section may also make it easier to combine the background section with another reference in an obviousness challenge of a claim. For example, discussing the invention in connection with background technology may eliminate or lessen the impact of any "teaching away" argument against an obviousness combination related to the background technology.
The drafter should also avoid detailed discussions of the prior art in the background section. Similar to not discussing the invention in the background section, discussing the prior art in detail or characterizing it may provide motivation for combining the background section with other prior art.
Patents prepared with these litigation-audience and litigation-related issues in mind stand a better chance of being interpreted as intended and prevailing against any challenges in litigation.
©2013 Thompson Reuters. Originally published by Westlaw Journal Intellectual Property. Reprinted by permission. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
Ad Law Buzz Blog
“Banning” a Banned Ingredients Claim: NAD’s Application (and Expansion) of the FTC’s Green Guides
March 18, 2024
INCONTESTABLE® Blog
Trademark Application for Fruity Pebbles’ Colors—“Yabba-Dabba-Delicious” but Not Protectable
March 8, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.