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Patent Strategies in Light of the New Rules September 21, 2008

Posted by mais in claim analysis, India, IPM Strategies, patent intelligence, USA.
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Courtsy Russ Krajec’s Anything Under The Sun Made By Man

In Patent Drafting and Claim Writing, Patent Drafting Theory, Practical Tips for Patent Drafting, Patent Strategy, Patents in Business, Business Theory for Patents, The USPTO

The latest rules from the US Patent and Trademark Office are quite sweeping.  The new rules have several facets.  On one hand, the PTO is limiting the number of continuation and continuation in part applications, as well as requests for continued examination (RCE).  On the other hand, the PTO is limiting the number of claims you can have by forcing the applicant to file an Examination Support Document if you exceed the claims.

Another twist is that the Examination Support Document may be forced where two applications are filed nearly simultaneously.  The PTO may assume that they cover the same patentable material and force an Examination Support Document unless you can prove that the applications do not cover the same material.

(As a side note, I have spoken to several patent attorneys/agents about the new rules and I have not yet found one who would even agree to write an ESD, no matter what the cost.  The reasoning is similar to why I will not file accelerated examinations.)

Each of the various requirements put on the applicant presents several problems, including the specter of patent invalidity and possibly inequitable conduct if the various support documents and petitions are not properly done.

In some situations, I used to espouse a kitchen sink approach to patent prosecution, where you load up a patent application with as many ideas as possible, get an early filing date, and file many continuation applications as possible.  This strategy can blanket an area of technology very effectively and makes the best use of early disclosure.  The strategy also could be used to tailor claims to an infringer so that lengthy and costly court battles may be averted entirely.

In view of the new rules, I think another strategy may be better suited.

This strategy is very targeted and narrow, and looks to find specific areas that may be infringed in the future, but does not include any more than it needs.

The targeted strategy is driven from the need to avoid overlapping applications and avoid the potential that a continuation application may need to be filed.

The steps are as follows:

1.  Define a very specific strategy for patent coverage over the entire scope of the technology you wish to cover.  The strategy must be driven by the current and potential business needs of the client, as well as the possible turns a technology may take.

2.  Draft a complete set of claims for each targeted area.  Each element of the claims should be carefully and thoughtfully considered for the language, the scope of coverage, any way the claims may be construed or misconstrued, how an infringer may infringe, and for how it differentiates from the known prior art.

3.  Only after the claims are completed, analyze the claims with the inventor and the business manager, reviewing the areas described in step 2.

4.  Draft a specification that addresses each and every claim and every feature of every claim, and avoid any additional material if at all possible.  Each feature must be described completely, but avoid adding other ideas that may be patentably distinct and that you may wished were a stand-alone patent.

One interesting twist to the new rules is to attempt wherever possible to force a restriction by including patentably distinct sets of claims.  Each divisional application is a separate family of applications for the purposes of continuation applications and RCEs.

The new rules may tend to force less disclosure and much more tailored specifications that may stand or fall on the first couple Office actions, rather than specifications with all sorts of material that may keep an application alive through several continuations.  This may lead applicants to perform good searches based on the claim set of step 2 prior to drafting the specification of step 4.

The net result is a shift from large, comprehensive patents that may disclose a broad range of concepts to those which are very narrow and even skeletal.  Instead of ‘promoting the progress’ by encouraging as much disclosure as early as possible, I think the new rules encourage the exact opposite.

This discussion is by nature very broad and sweeping, but based on the strategies that the new rules seem to favor.  I am sure that many situations may cause other strategies to be used within the new rules, and I will discuss them as they come up.

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Claim Construction: The Dictionary/Specification Dichotomy (20/04/2005) from Mondaq April 30, 2005

Posted by mais in claim analysis.
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Claim Construction: The Dictionary/Specification Dichotomy (20/04/2005) from Mondaq: “20 April 2005
Article by John R. Wetherell, Ph.D. and Michelle Mehok

Companies understand that in order to protect their technology from competitors, the company must have a strong patent portfolio. However, achieving this goal is requiring greater levels of drafting sophistication and strategy. It has become increasingly clear, by the recent case ruling in Merck & Co., Inc. v. Teva Pharmaceuticals USA, Inc., just how important it is to have a well drafted patent document that has clearly defined claim terms. At issue in the Merck case was the meaning of the apparently simple term “about” in the claims and what the patentee asserted was the meaning of this term as defined in the specification. The Federal Circuit’s ruling on the legally operative meaning of this term emphasizes the critical need for the patentee to exercise caution in drafting patent applications where a term in the claim is redefined from its common meaning.

Numerous court decisions have held that claim construction requires terms used in the claims to be given their “ordinary”, “accustomed”, or “dictionary” meaning unless the patentee has chosen to otherwise clearly define the terms in the patent specification or prosecution history. It is well settled that a patentee can act as his own lexicographer by choosing his own definition of a term and using it as he wishes so long as he remains consistent in its use and makes the meaning clear. The law provides the patentee with this opportunity because the public may not be schooled in the terminology of the technical art or there may be more than one way to interpret the structure or concept that is being claimed. However, the lexicographer privilege has recently come under criticism by some courts that have viewed it as imposing on the interpreter of the claims the burden of determining, through study of the patent’s specification or prosecution history, whether the patent gives an unconventional meaning to a term that otherwise has an established meaning. Most recently, courts have questioned what sources should be consulted during the claim construction process to determine the legally operative meaning of the words in a claim.

In a recent decision, the Federal Circuit reversed an August 2003 district court ruling thereby invalidating Merck’s patent on Fosamax, an osteoporosis treatment that was Merck’s second-best-selling drug. In a statement to the press after the verdict, Merck said that it disagreed with the court’s ruling “and is considering its options, including a request for reconsideration by the court of appeals.” Thus, Merck is considering asking the Supreme Court to review the ruling. It is doubtful that the Supreme Court would do so, because it rarely accepts patent cases.

The district court held that Merck had acted as its own lexicographer and in the specification had redefined the ordinary meaning of the term “about”. Merck had taken the position that it acted as its own lexicographer and that the claim term “about 70 mg of alendronate monosodium trihydrate on an alendronic acid base” should mean exactly 70 mg of alendronic acid. Ordinarily, of course, the term “about” would mean “approximately”, but the district court sided with Merck and ruled that the term “about” meant “exactly”. Relying on this latter construction of the term “about”, the district court found the prior art cited against the patent to be insufficient to invalidate the patent based on anticipation or obviousness. Teva’s allegations that the claims at issue were invalid was based on (1) anticipation by a July 1996 Lunar News article and (2) obviousness in light of an April 1996 Lunar News article combined with the July 1996 article. However, the district court found the patent valid and infringed by Teva’s Abbreviated New Drug Application (“ANDA”), effectively delaying Teva’s FDA approval of the ANDA until the Merck patent expires.

On appeal, the Federal Circuit addressed claim construction and obviousness. The Federal Circuit opined that when construing a claim term, the court must first consider the intrinsic evidence, starting with the language of the claims. “General claim terms should be construed consistently with their ordinary and customary meanings, as determined by those of ordinary skill in the art.” In this regard, the specification is reviewed to determine whether the patentee acted as his own lexicographer of a term that already has an ordinary meaning. However, any “statement in the specification must have sufficient clarity to put one reasonably skilled in the art on notice that the inventor intended to redefine the claims term.”

Merck’s position was that the following passage from the specification redefined “about” to mean “exactly”:

Because of the mixed nomenclature currently in use by those or [sic] ordinary skill in the art, reference to a specific weight or percentage of bisphosphonate compound in the present invention is on an active weight basis unless otherwise indicated herein. For example, the phrase “about 70 mg of a bone resorption inhibiting bisphosphonate selected from the group consisting of alendronate, pharmaceutically acceptable salts thereof, and mixtures thereof, on an alendronic acid active weight basis” means that the amount of the bisphosphonate compound selected is calculated based on 70 mg of alendronic acid.

The Federal Circuit disagreed and held Merck’s definition of “about” is ambiguous in that this passage was not clear enough to put one of skill in the art on notice that the ordinary meaning of “about” was redefined. The term “about” was amenable to two interpretations. The Federal Circuit stated that, under Merck’s construction, the phase “about 70 (or 35) mg” means that one should administer approximately 70 (or 35) mg of the derivative compound, such that the end result would be that the patient received exactly 70 (or 35) mg of active compound. In other words, the phrase “about 70 (or 35) mg” modifies the quantity of the derivative compound rather than the resulting active compound. However, according to Teva, the phrase could also be construed to mean that “about 70 (or 35) mg” refers to the amount of resulting active compound rather than the amount of the derivative compound administered. The term “about” would then serve to modify the quantity of the active compound in a way consistent with its ordinary meaning of “approximately”. Given that the passage was agreeable to both interpretations, the Federal Circuit held that Merck did not clearly set out its own definition of “about”.

The Federal Circuit further decided the invention was obvious in light of earlier published articles. In short, the Federal Circuit opined that the district court clearly erred in not (1) distinguishing the claimed invention from the two Lunar News articles, (2) ascertaining the required motivation to combine references to achieve the claimed invention which clearly suggested the dosages described in the articles, (3) determining the probative value of the articles, and (4) weighing the secondary considerations or Merck’s commercial success. Judge Rader wrote a dissent in which he made two specific points: (i) that the majority erred in its analysis of the lexicographer doctrine and (ii) that the majority should have given some deference to the lower court’s decision.

The Merck decision warns the patentee to be clear when defining claim terms. It is hoped that another case pending before the Federal Circuit will provide additional clarification regarding the process of defining terms used in the claims. In Phillips v. AWH Corp., which was heard en banc on February 8, 2005, the Federal Circuit prudently chose to re-examine and consider seven issues: (1) how and to what extent various types of evidence, particularly the specification and dictionaries, serve the public notice function of patent claims; (2) how the specification should be used to interpret claims without impermissibly importing limitations into the claims; (3) how and to what extent various types of evidence, particularly the specification and dictionaries, should be used for claim construction; (4) whether the two approaches (dictionary and specification) should be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks; (5) when, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity under, e.g., 35 U.S.C. §§ 102, 103 and 112; (6) what role should prosecution history and expert testimony by one of ordinary skill in the art play in determining the meaning of the disputed claim terms; and (7) what deference, if any, the Federal Circuit should give to a district court’s claim construction. Thus, this decision is expected to provide additional guidance on the proper approach to construing patent claims.

In light of the fact that it is not uncommon for the patentee to use a word to mean something different than its dictionary definition and because a patent’s specification can be ambiguous, it is advisable that the patentee and his counsel work closely together to clearly define claim terms having technical, scientific, or multiple meanings.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Streamlines Claims Test/Claims Chart Development (06/05/04) from Mondaq October 22, 2004

Posted by mais in claim analysis.
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patent cafe .com (cafezine) – United States – PatentCafe Streamlines Claims Test/Claims Chart Development (06/05/04) from Mondaq: “patent cafe .com (cafezine)
United States: PatentCafe Streamlines Claims Test/Claims Chart Development
Web-based Claims Charting Breaks Long Tradition of Hand Comparison

06 May 2004
Article by Andy Gibbs
Not long after patent attorneys, R&D researchers or patent drafters being comparison of inventions or patents, the focus converges on the patent claims. The process of comparing claims is cumbersome, time consuming, and when relevant patents remain elusive to traditional Boolean search engines, frustrating. Nevertheless, claims comparison remains the critically important core to patentability searches, invalidity searches, infringement studies, and even in testing proposed claims prior to filing new applications.

Litigation: Infringement Analysis:

In instances of infringement litigation, the Rules of Practice often require the parties (Claimant, as well as Adverse Party) to submit a clear outline of the infringed claims of the patent. Of course, this applies to trial preparation as well as Markman hearings.

The Adverse Party’s Obligations typically include the serving on all parties an Adverse Party’s Claim Chart. The Adverse Party’s Claim Chart usually includes separately, with respect to each claim in Claimant’s Claim Chart, the identification of all items of prior art that anticipate the claim or render it obvious. For each item of prior art, a position must be made as to whether it anticipates the claim or renders it obvious. If a combination of prior art references makes a claim obvious, that combination must be identified.

The prior art must be identified as specifically as possible, including:

(a) prior art patents must be identified by their number, country of origin, and date of issue; and (b) identify where, specifically, within each item of prior art each element of the claim is found.

Assessing Patentability:

Patent searches result in a stack of prior art patents deemed to be relevant to the present invention. Thumbing through a stack of papers is an inefficient method of quickly assembling the most important prior art, especially when extracting the claims for comparison to the present invention are in paper form, making compilation in an opinion document requires re-typing.

Yet again, a digital means to evaluate and assemble comparative claims from a variety of patents would not only streamline the claims charting process, but in reality short-circuit the fatigue that creeps in after digesting the dozens of patents relevant to the present case.

Drafting New Patent Claims:

In some circles, Festo established a new standard of application writing – that is, draft a high volume of independent and dependent claims so that, in the event of disallowance of a particular claims as written, the claim can be deleted (rather than amended) and there will be another more appropriate claim in the set upon which to rely.

More appropriately, had the robust claims analysis tools been readily available, the proposed claims could be tested against all prior art and amended prior to application filing. The specification can then be amended as appropriately to support the amended claims.

First Web-Based Claims Charting System:

In all of the above instances, and more not specifically addressed, development of a Claims Chart is a reasonable and appropriate method of capturing and evaluating claims of one patent with many others.

PatentCafe’s Claims Charting system incorporates its advanced Semantic patent search tools that extract claims directly from the most relevant patent returned in the concept-based search results.

Input to the Claims Test / Claims Chart system can be a valid patent number, text of claims copied and pasted into the text box, or the full text of a proposed claims set for a new application.

Prior Art Claims are then generated by mining the ICO Global Patent Database using the company’s advanced Latent Semantic Analysis search technology. The more relevant patents (and claims) are presented at the top of the results set for immediate claims comparison to the baseline patent of set of patent claims.

The system then takes those claims and immediately builds a Claims Chart online, allowing the side-by-side comparison of claims from a Baseline Patent or proposed claims, against the claims of one or more patents of interest.

Output is in PDF format, creating a document that presents the claims of a pair of patents on opposing sides of the page. PDF claims Charts are created “on the fly”, creating Claims Charts in a mater of minutes. (sample: http://www.iamcafe.com/papers/ClaimsTest_PDF.pdf

Notes, comments and annotations, along with “copy and paste” text from any source are integrated into the claims chart document, appended to the end of the claims test document.

The claims Chart utility is included in PatentCafe’s Infringement Litigation Suite http://www.iamcafe.com/Index.asp?option=Litigation, and is available separately as a stand-alone solution for patent or claims drafters or patent researchers.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.