1) CLAIM DRAFTING

JUST TRY TO CLAIM THEIR INVENTION. WHAT THEY DID THAT WAS NEW.

Formatting: (Goal is to define the boundaries of your property rights).

-Single sentence requirement. Can’t have to independent clauses.

0) Preface/introduction: “what I claim is…

-doesn’t have to be ornate.

1) Preamble: “a bacterium from the genus X…”

-noun that is the object of the sentence

-giving purpose doesn’t limit it to only that purpose unless the language is necessary or essential.

2) Transition word: “containing therein

*presumption of open format unless there is some limiting language.

-comprising = (open claims) includes the elements described thereafter and anything that includes each those elements PLUS anything else. Open class.

-consisting essentially of = (in between) includes elements described thereafter and anything that includes those elements AND addition of elements that don’t change the essential function/properties of the compositon. (ex: coloring dye added on).

-consisting of = (closed claims) includes nothing but the things described after.

*better for unpredictable fields, where slight changes could change properties.

-“By causing” (makes sense for methods).

-‘wherein the improvement comprises’ for improvement patents. (Jepson claims).

3) BODY: Describe the elements, sub-elements, and how they connect

-Dependent claims: reference prior claim, incorporate all its limitations by reference + add more.

-further transition,=>sub-elements.

-“wherein” to change subject. “Part C, attaching said part A; wherein said pt A is made of gold”

POTENTIAL ISSUES:

-The broader the claim, the harder it will be to patent the invention.

*NEED an antecedent basis in the specification, prior claims, or PHOSITA knowledge.

-New elements introduced w/ “a/an X”

-Then when referred to again, “said X”

-Means-plus-function elements: cover any means for performing the function.

*use the word “means” => presumed to be M+F element.

UNLELSS M+F if a specific structure is described in the claim.

-cover only the means disclosed in the specification + equivalents.

-have to ID a means, even if clear to PHOSITA.

-make the entire claim narrowly construed.

-Claim must recite more than a single element. (‘claim for a combination’)

Ex: NO – “widget comprising means for fastening A to B”

Ex: YES – “widget comprising A, B and a means for fastening A to B”

-Can recite two+ elements, both of which are means+function.

Ex: ‘widget comprising means for performing function X and a means for performing function Y’

-Product-by-process claims: interpreted as drawn to the product, but still limited by the process steps. (often for chemical inventions, too hard to describe the chemical itself).

-Improvement claims (Jepson claims): “In X … an improvement comprising Y and Z”

-(Group selection claims) Markush claims: “A comp comprising ABC, where C is selected from the group consisting of X Y Z”

-Random tips

-try drafting multiple levels

-Thing = object; article; apparatus; device; member; medium; mechanism. Means*

-Definiteness (see written description below).

*maybe suggest defensive publishing instead of patent? (though not in my best interests as your atty)

OTHER

*check infringement section for potential issues.

*claims don’t have to enable, obviously.

2) PATENTABLE SUBJECT MATTER (§101) (Always Raise)

1) Claim MUST FALL UNDER §101 CATEGORY: *basically ALL inventions are.

“process, machine, manufacture, or composition of matter” or any improvement thereof.

*Broadly defined – “anything under the sun that is made by man” (Chakrabarty).

“Process” = process, art or method. Includes new use of a known process/machine/mfger/comp. (§100)

*narrower by definition – all steps must have been performed in the same order.

“Machine” = generally an article with moving parts. (Chak).

“Composition of matter” = comps of 2+ substances, thru chemical union or mechanical mixture.

“Manufacture” = *(catch all), production of articles, giving these materials new forms, qualities properties or combinations. (Chak).

“or any new and useful improvement thereof”

2) DIRECTED TO A PATENT-INELIGIBLE CONCEPT? (Pt. 1 of Alice test). *basically ALL inventions

-Laws of nature: fundamental facts about the universe (not ‘new’ under §101 – Bilski).

-Products of nature: “natural phenomena”

-Abstract ideas: exists as thought/idea, but not physical or concrete. (not ‘useful’ under §101: Bilski).

FACTORS:

-longstanding human practice(Alice), mathematical formulas (Benson).

-‘building blocks’ of other inventions should be protected. (Purpose of the exclusion).

3) INVENTIVE STEP? (Pt. 2 of Alice test).

The court must find “an element or combination of elements that is sufficient” to ensure that the patent is significantly more than just a patent on the ineligible concept itself. Some application of the concept.

BUT must be careful, lest this exclusionary principle “swallow all of patent law” since everything directed to #2

*Split the elements? DO BOTH (apparently).

-Diehr: look at the claim as a whole.

-Alice: take claim elements separately, is each step is purely conventional. Whole can be > sum.

-FACTORS

-NOT groundbreaking nature of the discovery, or extensive effort.

-Adds more steps, limiting its scope; Something markedly different from what’s in nature.

-broad-sounding language is problematic. (Morse “I do not propose to limit myself”)

-broad claims problematic, more than contribution . (Funk Bros. – [claimed all combos of the material]).

-claiming more than your contribution. (Morse unpatentable, Bell patentable).

-(though it runs together) degree of nonobviousness/usefulness (practical application). (Bilski?).

-type of article/process historically subject to patent protection? (Diehr – industrial).

-Process patent factors

-not just mental steps. (Benson).

-machine or transformation test (‘useful clue’ but not determinative, not sufficient. Bilski).

Process either

-Tied to a particular machine or apparatus

-Or transforms a particular article into...

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