Winning at §112: The Language of Patents
Drafting patent applications and prosecuting patent applications can be a daunting task, particularly today where virtually every commercially valuable patent will likely be challenged at the Patent Trial and Appeal Board (PTAB).
Although the PTAB cannot directly consider challenges relating to 112 during an inter partes Review (IPR), there can be little doubt that the patent specification has become increasingly important in recent years. The Federal Circuit and PTAB do looked to the specification to see whether there is adequate support for a particular claim interpretation even when the issue is a rather straight forward 102 or 103 matter. Indeed, patent law has experienced what can best be described as a disclosure revolution. Gone are the days of cheap patents with thin disclosures that describe little and merely point the reader in the right direction. Even if those applications can make it out of the Office, they stand little chance of running the litigation / challenge gauntlet.
Today, applications must be thick with technical disclosure and claims must specifically incorporate the technical advance(s) made by the inventor vis-a-vis the prior art if one is to have any realistic chance of obtaining, and keeping a patent.
This panel will discuss a variety of issues important to the patent practitioner, with an eye toward drafting and prosecuting patents that are capable of withstanding challenge.
Among other things, the panel will discuss:
- The use (or avoidance) of means-plus-function claims.
- Best practices for ensuring a complete and thorough specification.
- Best practices writing to overcome Alice-based 101 rejections.
- Patent profanity: Words to avoid when drafting (and why).
Reading
- Patent Procurement and Strategy for Business Success Part I: Building and Strategically Using Patents
- Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers
- Patent Procurement and Strategy for Business Success Part III: Prosecution – Wielding an Invisible Hand