Patent Claim and Specification: Does the Article "a" Mean Only One or More Than One?

Best Practices for Preparing and Prosecuting Patent Applications

A live 90-minute premium CLE video webinar with interactive Q&A


Thursday, August 5, 2021

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, July 9, 2021

or call 1-800-926-7926

This CLE webinar will guide patent counsel on the impact of recent decisions addressing "a" and the implications of these decisions on U.S. patent practice. The panel will offer best practices of fundamentally sound principles to prepare and prosecute a U.S. patent application to avoid careless claim terminology and untoward language in the specification.

Description

The more care taken during patent prosecution the more likely it will be that the patent will be construed as the patentee desires and will withstand any challenges. A patent drafter’s selection of even the smallest of words may have a significant impact on how a claim is construed. In fact, “a” is the shortest word in the English language. It is amazing how much trouble “a” can cause a patent owner.

The use of “a” has proven to potentially be problematic. Does “a” mean “at least one,” as found in KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351 (Fed. Cir. 2000) and Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338 (Fed. Cir. 2008)? Or does it mean one and only “one,” as the Federal Circuit held in Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011) and Insituform Techs., Inc. v. CAT Contr., Inc., 99 F.3d 1098, 1106 (Fed. Cir. 1996)? Recently, the Supreme Court, in the context of a non-patent statute joined the fun, pitting Justices Gorsuch and Kavanaugh against each other in a duel of some 40 pages in the recent 6-3 decision in Niz-Chavez v. Garland, 593 U.S. ___ (2021). And what resulted from the mental anxiety of those 40 pages? The Supreme Court held that on those facts and that statute, “a” means one and only one.

Returning to the more familiar grounds of assessing the fundamental significance of claim construction to patentability, validity, and infringement determinations can put the spotlight on the importance of word selection, and in this case, use of “a,” in drafting the claims and specification of a patent application (does that mean “one and only one” application or at least one application?). The Federal Circuit has pointed out that it is the responsibility of the patent drafter to avoid textual sloppiness and resolve ambiguity.

Listen as our authoritative panel of patent attorneys establishes that the mighty word “a” can be dangerous to a patent owner and examines the impact of recent decisions addressing "a" and the implications of these decisions on U.S. practice. The panel will offer best practices of fundamentally sound principles to prepare and prosecute a U.S. patent application to avoid careless claim terminology and untoward language in the specification.

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Outline

  1. Analysis of cases where “a” meant “one or more”
  2. Analysis of cases where “a” meant “one and only one”
  3. Supreme Court decision and revelation of just how big a deal “a” can be
  4. Best practices for preparing and prosecuting patent applications, echoing that sometimes it is not most important to write to be understood, but to write in such a way that the author cannot be misunderstood

Benefits

The panel will review these and other high profile issues:

  • How can a single word in claim language and/or specification lead to the demise of U.S. patent rights?
  • How do recent decisions impact drafting claims and specifications?
  • What steps can counsel take to avoid careless claim terminology and careless mistakes in the specification?

Faculty

Bagley, Margo
Margo A. Bagley

Professor of Law
Emory University

Ms. Bagley is Asa Griggs Candler Professor of Law at Emory University School of Law. She rejoined the Emory faculty in...  |  Read More

Hooson, Sarah
Sarah Hooson

Director, Legal
Merck

Ms. Hooson is director in the Intellectual Property Group at Merck in Rahway, NJ. Her present responsibilities include...  |  Read More

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Kostiew, Krista
Krista Kostiew
Senior Patent Counsel/Regional Patent Manager
Unilever

Ms. Kostiew is an experienced patent attorney with a demonstrated history of working in the consumer goods industry...  |  Read More

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