Tag Archives | patent drafting

Patent Drafting: Enabling Skilled Person to Make and Use the Invention

USPatent5231253_Fig3Automotive Technologies International (ATI) sued numerous vehicle and parts manufacturers including BMW and Delphi Automotive Systems for infringing US patent 5,231,253 on side impact crash sensors for deploying an air bag. The court of appeals determined that the patent was invalid for failing to enable the claimed invention in Auto. Techs. Int’l, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274 (Fed. Cir. 2007).

The law requires that your patent application describe your invention to such a level of detail so as to enable one who’s skilled in the art to  make and use the invention, without undue experimentation. This is known as the enablement requirement. The relevant statute states that every patent must describe “the manner and process of making and using [the invention], in such full, …

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LEGO Patent Demonstrates Why Your Patent Application Should Describe Alternative Versions of the Invention

LEGO_Fig4

To protect an invention broadly, a patent application should describe alternative versions of the invention. When developing an invention it may be that several variations of the invention or a component of the invention are considered before a final version is settled on for production.

You often have a better chance of obtaining broad patent protection if those unused variations of the invention are included in the application along with the final version.

The LEGO Patent and Alternatives

The patent on the LEGO building block toy (U.S. Patent No. 3,005,282) provides a good example. The patent includes not only the iconic block that many recognize, shown at the top of this post. But it also includes six other versions that I have not seen on the market and may …

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Burnt Dough and the Difficulties in Patent Drafting

“[E]ven if, as plaintiff argues, construing the patent to require the dough be heated to 400 degrees to 850 degrees Farenheit [sic] produces a nonsensical result, the court cannot rewrite the claims. Plaintiff’s patent could have easily been written to reflect the construction plaintiff attempts to give it today. It is the job of the patentee, and not the court, to write patents carefully and consistently.” – Colorado United States District Court

Patent claim drafting requires careful attention. The difference between the use of “to” and “at” in a claim directed to a method of producing dough, resulted in the difference between a worthless patent claim and a patent claim that might have had value. This is why going the DIY route with a non provisional utility patent application is

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Don’t Admit That: Problems in DIY Patent Application Drafting

“Mr. Morsa … admitted in the specification that the system as described in the patent ‘can be implemented by any programmer of ordinary skill . . . ‘ . . . Therefore, by using Mr. Morsa’s admissions, the Board simply held him to the statements he made in attempting to procure the patent.” – Federal Circuit Court of Appeals.

US20030093283A1_Fig3Properly drafting your own patent application can be difficult. Client-drafted DIY patent applications sometimes say too much, don’t say enough, or both. A client drafted patent application can say too little by failing to describe the invention with sufficient detail. And a client drafted patent application could say too much by making unnecessary admissions that can negatively impact the application.

In the case of In Re Morsa, No. 2015-1107 …

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How to Obtain Broad Patent Protection: Describe Alternate Versions of the Invention

US4743262_WrittenDescriptionClients often wonder why a patent application on a relatively simple invention is relatively long. The answer is that even the most simple inventions are not simple to describe properly in a patent application.

To write a strong patent application, the invention needs to be described to a level of detail that many clients would not have thought necessary.

Its not unusual that a client brings a 3 to 5 page provisional patent application that the client wrote themselves, and the non-provisional application I write is at least three to four times as long, or 15 to 20 pages or more.

This is why DIY patent applications are difficult to write well (but there are options and trade-offs when money is tight).

The details and length are necessary because that …

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