Patent Claim and Specification Drafting and Prosecution

Description

Practitioners strive to secure valid and enforceable U.S. patent claims that will be construed to have the scope intended by the client, whether in litigation or before the PTAB. History reveals not infrequent royalty-free patent licensing resulting from mistakes in the claims or in the specification used to interpret the claims. Are these mistakes the result of carelessness? Of ignorance?

Some of these decisions have turned against the patent owner based on misusing some of the smallest and seemingly most innocuous of words, symbols, and expressions in the English language, such as "a."

Other times it is because the subject matter was disclosed but not claimed. Or the drafter did not remain vigilant about maintaining a tight priority chain in the specification. Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc) emphasizes the specification at the heart of claim construction analysis. If fatal mistakes are made in the claims and specifications, it doesn't matter which standard the Examiner, PTAB, or the courts use to interpret the claims.

The more care a practitioner takes throughout prosecution--from telling the invention story in the initial drafting of the specification to the language of the claims to the winning arguments to the Examiner--the higher the likelihood that the patent will be construed as the patentee desires and will withstand any challenges.

Listen as our authoritative panel of patent attorneys discusses the impact of Federal Circuit and PTAB case law on your daily U.S. practice. The panel will offer best practices of fundamentally sound principles to prepare and prosecute a U.S. patent application to avoid traps for the unwary or careless claim terminology and untoward language in the specification. The panel will also reveal several real world examples of "worst" practices that have led to the destruction of U.S. patent rights.