May 29, 2013
Westlaw Journal Intellectual Property
Authored by Anthony J. Lombardi
Decisions made during the prosecution of patent applications can affect the scope of patent claims. An office action showing the results of a patent examiner's examination of a patent application might include a variety of rejections preventing the application from being granted as a patent.
These rejections often revolve around the claims, which is the part of the application defining the scope of coverage that the applicant seeks to patent. For example, the patent examiner may have rejected the claims in view of prior-art references. In response, the practitioner will need to decide whether to amend the claims. Further, whether the claims are amended or not, the practitioner will also need to submit to the examiner an analysis explaining how the claims are patentable over the prior art cited in the rejection.
The response to the office action becomes part of the written record (known as the prosecution history or file wrapper) of a patent. That written record can become a focal point in any litigation involving the patent, which may occur years after the last paper is filed with the U.S. Patent and Trademark Office (USPTO).
The claim-construction process, in which the meaning of the claims is determined by a judge and typically decided after a Markman hearing might narrow the scope of the claims in view of the amendments and remarks in the prosecution history. The hearings derive their name from the U.S. Supreme Court's opinion in Markman v. Westerview Instruments Inc., 517 U.S. 370 (1996), in which the court decided that judges, not juries, should construe patent claims.
The amendments and remarks may also affect whether the doctrine of equivalents is available to the patentee.
Under the doctrine, a party may be liable for patent infringement even though a product or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention, having insubstantial differences from the literal requirements of the claim. Understanding the ramifications of prosecution decisions can help avoid unnecessarily narrowing the scope of the claims.
Each word counts in a claim. Introducing words through a claim amendment means there are now more words for the judge to interpret in a later litigation. These additional words can potentially narrow the meaning of the claim. Some narrowing of a claim's scope may be necessary during prosecution for example, to distinguish the invention from a prior-art reference. But the practitioner should strive to amend claims no more than necessary to achieve a desired claim scope and should avoid unnecessary amendments that may narrow the scope of a claim. The practitioner should therefore strike a balance and amend claims so that they are valid yet can otherwise broadly construed.
In seeking to avoid unnecessary amendments, the practitioner should first carefully determine whether an amendment to a claim is truly necessary and, if so, understand the justification for the amendment. For example, an amendment may help distinguish the claim from prior art, clarify the scope of the claim, or tailor the claim to a particular infringing product. Amendments made for these reasons can improve the claim and result in the claim being granted by the USPTO, and subsequently found by a court to be valid and infringed.
On the other hand, unnecessary amendments can lead to claims that are overly narrow. For example, claim amendments introducing unnecessary words can lead to claims that are narrowly construed during a judge's claim construction. In addition, surrendering subject matter through amendment may result in a claim that no longer captures an infringing product, but would have been otherwise valid without the amendment. Thus, before making a claim amendment, the practitioner should decide whether an amendment is needed and understand the purpose of the amendment.
After understanding the purpose of the amendment, the practitioner should formulate the scope of the amendment to achieve the desired purpose. Understanding the patent application's specification, which provides a written description of the invention, is an important part of this process.
For example, when amending a claim to distinguish it from a prior-art reference, the practitioner should carefully evaluate the reference and understand how the patent application's specification differs from it. Similarly, when amending a claim to cover a particular product, the practitioner should carefully consider the features of that product in comparison to the patent application's specification.
As part of this process, the practitioner should ensure that the amendment finds full support in the patent application's specification. The practitioner should also check that the amended claim language comports with the other words of the claim being amended. In doing so, the practitioner should avoid introducing a new term in a claim through an amendment.
Introducing a new term to describe subject matter already defined by a different term may create opportunities for opponents in litigation to argue that each of the terms (the new and the existing term) are different. Accordingly, the practitioner should use claim terms consistently when making amendments, both in relation to the patent application's specification and other claim language.
After formulating the scope of the claim amendment, the practitioner should carefully evaluate each word and decide whether each word is truly necessary to implement the amendment. If the answer is no, the practitioner should consider deleting words describing unnecessary subject matter or potentially limiting the claim more than intended.
The practitioner should also check the amended claim for words that might overly limit the scope of the claim. For example, words such as "all" and "only" may overly restrict the claim's scope more than is necessary and more than intended.
Claims that use these words are more easily designed around by potential infringers. Thus, the practitioner should carefully evaluate the use of such words and delete any that are not needed.
Finally, the practitioner should consider the effect of the claim amendment on other claims that directly or indirectly depend from the amended claim. For example, deleting a term from an independent claim may trigger the need to amend a dependent claim in which the term appears to provide proper antecedent basis—that is, to introduce the term—in the dependent claim.
Further, some claim amendments may change the scope of a claim so that a dependent claim no longer comports with the amended claim from which it directly or indirectly depends. The practitioner should thus consider whether amendments are needed to maintain consistency between the amended claim and any claims that directly or indirectly depend from it.
Remarks in the written response to an office action can also affect the scope of the claims. The practitioner may or may not determine that amendments are called for, but in either case, if an office action has rejected claims over prior-art references, the response will need to explain why the claims are patentable over the references. The practitioner should thus try to formulate remarks that do not restrict claim scope.
The practitioner should prepare concise remarks. The remarks should include information sufficient to address rejections by the USPTO, but should avoid introducing additional commentary or discussion.
If the claims are not being amended to overcome rejections, the remarks should provide clear and concise reasoning pointing out the errors in the rejections. If the claims are being amended, the remarks should focus on the reasons supporting the patentability of the amended claims over the references. In either case, the practitioner should refer to claims and avoid the word "invention." Statements describing or characterizing the "invention" may end up restricting the scope of all of the claims, even if the claims do not include certain features.
Instead, the practitioner should focus on the claim language itself. For example, in a discussion explaining how the claims distinguish over the prior art, when referring to features of the claims, the practitioner should quote the claim language.
The practitioner should refrain from elaborating on the claims or referring to other features of the invention that are found in the disclosure but that are not included in the claims.
The practitioner should also avoid making statements that tie a claim to a description of a particular embodiment in the specification. Such statements may limit the scope of the claims to an embodiment that is narrower than the claim itself. Any references to the specification to explain a claim should clearly indicate that the reference to the specification is for the purpose of providing an example and the description being referenced is merely one embodiment.
Similar to quoting claim language in the remarks, the practitioner should quote from prior-art references when distinguishing them from the claims. Characterizations of the reference or descriptions expanding on the teachings of the reference, instead of direct quoting, should not find their way into the remarks. Instead, the practitioner should locate the most relevant portion of the reference and quote that portion in the remarks when contrasting the reference with the claims.
The practitioner should leave open the possibility that other distinctions exist between the prior art and the claims. Although one difference between a reference and a claim may overcome a rejection, other differences may exist that also distinguish the claim from the reference. Thus, the practitioner should avoid making statements suggesting that a reason advanced for patentability is the only reason for patentability. Leaving the door open to other differences may help in a later litigation.
Practitioners should consider conducting examiner interviews to facilitate and streamline the patent-prosecution process. Examiner interviews can help to expedite prosecution, by reducing both the number of office actions and the number of amendments. Understanding the examiner's perspective firsthand may help resolve issues faster than through the exchange of written papers and lead to receiving a patent sooner. Focusing on the most pertinent prior art and avoiding iterative rounds of examination can also help to avoid amendments that might unnecessarily limit claim scope.
Removing additional rounds of back-and-forth written correspondence between the applicant and the examiner will also help to achieve a compact written record—an advantage in a later litigation.
The decisions made during prosecution will likely affect the scope afforded to patent claims. Prosecuting patent applications with these considerations in mind can lead to patents that are not overly narrowed by amendments or remarks, and that are more likely to prevail against challenges in litigation.
©2013 Thompson Reuters. Originally published by Westlaw Journal Intellectual Property. 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.
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