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How to draft patent claims in the U.S. to maximizing their potential to be exploited.

Byline: Amanda Ciccatelli

In the United States, there is a growing problem with claims being invalidated through IPR (inter parties review) and with claims being held non-patent eligible under 35 U.S.C. 101 or invalidated under 35 USC 112. It has become vital to draft strong specifications and craft claims that will survive 112 and 101 issues, and can be patented in order to capture infringers. It is important to recognize the value of drafting "licensable" claims, namely claims that a third party will be encouraged to license, and not attack in the courts or under IPR.

Inside Counsel sat down with patent preparation and prosecution experts Don Daley and John Fitzpatrick, principals with international intellectual property law firm Harness Dickey. They shed some light on tips for claim and specification drafting in the U.S., as well as detailing how one might navigate prosecution issues, while also maximizing the ability to capture potential infringers and mitigating potential devaluation of a patent during licensing negotiations.

"The high invalidation rates of post issuance review processes such as inter parties reviews are partly a result of overreaching by patent applicants, partly a result of the intentional design of the proceedings, and partly a result of the patent office's implementation," explained Wheelock.

First, according to Wheelock, most of today's patent practitioners learned their craft with the Judge Rich's exhortation in mind: "the name of the game is the claim." At times the Federal Circuit has been their willing accomplice, for example instructing that the claim preamble is not necessarily a limitation on the scope of the claim, and the result is that many patents contain some claims that are invalid.

Second, the USPTO intentionally designed the post issuance processes to favor the patent challenger. Despite the fact that the proceedings relate to issued patents that should enjoy a presumption of validity, the USPTO gives the patent claims their broadest reasonable interpretation, rather than their actual meanings, making the claims easier to attack than they would be in court. The USPTO applies a preponderance of evidence standard that makes it easier to prove invalidity than in the courts where invalidity must be proven by convincing evidence.

Third, The PTAB appears to embrace the message that the point of these proceedings is to eliminate problematic patents, and at least on occasion exceeds its adjudicators role, for example occasionally instituting on grounds not presented by the petitioner, or invalidating patents based upon arguments not made by the petitioner.

"The filing of IPRs has become quite common in response to patent litigation, in licensing disputes or as part of a risk mitigation strategy in part because of the faster time to resolution and "lesser" legal fees relative to more traditional patent invalidity assertions in patent litigation. In practice, a party considering IPRs will have likely conducted a more thorough and comprehensive search of potential prior art, especially in view of potential estoppel issues," said. Uribe.

Additionally, because a petition for an IPR will only be granted by the PTAB based on a determination that there is a likelihood that the patentability of at least one claim can be challenged by the prior art identified in the petition, once an IPR is instituted by the PTAB, at least some of the claims of an issued patent will be considered to recite non-patentable subject matter. The general acceptance of IPR as a strategic tool in the marketplace and the criteria by which petitions for IPRs are granted result in a significant number of patents determined to be not patentable.

"The importance of carefully crafted patent claims and comprehensive specifications appeared to diminish in the now-waning era of easy enforcement," said Wheelock. "Quantity trumped quality, as many innovative companies commoditized patent applications demanding Cyten and ten' applications (ten pages of specification and ten claims) for low flat fees. The broad apparent scope of the claims, the high cost of patent defense, and the low risk of consequences led to a Cymight as well try' attitude of patent enforcement. This in resulted in corrective effects we are now seeing."

First, the courts expanded the exception to patentable subject matters in Mayo and Alice, dispensing with many patents on inventions that were too broadly claimed or too sparsely described. Then, in Octane Fitness, the courts made it easier for defendant to recover attorney's fees, by reducing the exceptional case threshold. Congress created in the AIA, and the USPTO implemented, the current scheme of post issuance challenges to reduce the burden of challenging a patent. As a result, according to Wheelock, there is a premium on carefully crafted patents--patents that disclose and capture what the inventors have actually invented.

"Patents are still being issued, and they are still being enforced, but the value of carefully crafted patents is re-emerging," he said.

Through the years, there have been legislative changes with regard to Section 101 and 112 of the Patent Act, case law interpreting the application of relevant sections of the Patent Act, and changes to the procedures implemented by the Patent Office in order to fulfill the requirements of the Patent Act. On multiple occasions, changes have resulted in a different interpretation of how the requirements of Section 101 and 112 are evaluated in pending patent applications. In response, patent practitioners would attempt to consider the need for differing levels of technical description and embodiments to provide the greatest flexibility in addressing a changing standard during prosecution.

"Based on historical trends, there is a strong likelihood that additional changes will occur in the future," he said. "But, the need to consider and provide support for alternative types of claims based on potential changes is not new. It would seem some of the best practices adopted in the past will continue to offer the same benefit in the future."

The way to avoid Section 101 and 112 rejections is to limit the claims to the actual invention, and not "over claim" it, according to Wheelock. "Many patent practitioners learned their craft with Judge Rich's exhortation in mind: Cythe name of the game is the claim.' We deride picture claims, and pride ourselves on crafting claims with broad functional language that extend far beyond what the inventor ever contemplated," he said. "At times the Federal Circuit has been our willing accomplice, for example instructing that the claim preamble is not necessarily a limitation on the scope of the claim."

To reinforce the idea that the claims are directed to a patentable invention, rather than an unpatentable idea, the patent drafter can do several things, according to Wheelock. First, the claim can have a detailed preamble that identifies a solution to a technical problem, rather than a broad goal to be accomplished. Too often, in determining whether a claim is directed to an idea, an examiner finds the idea in the expansive language of the preamble. The drafter should not invite rejection in this manner, and then, the drafter can weave a sacrificial idea into the disclosure, in order to position the claimed invention as a patentable solution to a particular problem encountered in implementing the idea.

He explained, "Throughout the specification the drafter can focus attention on a specific invention rather than on the generic idea or result: in the field of the invention, in the background of the invention, and the summary of the invention."

Next, the drafter can provide a description of then invention and any contemplated alternatives. The specification is directed to a person of ordinary skill in the art, so drafter does not have to disclose details that of the invention that would be apparent to a person of ordinary skill in the art. But, availing oneself of this proper drafting shortcut can rob the specification of details that reinforce the technical nature of an invention. Broadly identifying a result to be accomplished, while suggesting that details of accomplishing the desired result are well within the ambit of one of ordinary skill smacks of claiming an idea rather than invention.

"A good rule of thumb would be to include enough detail in the specification to meet the requirements of means-plus-function or step-plus-function claiming under 35 USC 112(f). These types of statutorily authorized functional claims are not narrow when they are supported by a robust disclosure," he explained. "Even when the claims are not in means-plus-function format, a detailed disclosure of the structure or steps will embue the claims with enough substance to survive Section 101 and 112 challenges."

While a simple disclosure is desirable so that a judge or jury can understand the invention, simplicity and ease of understanding also tend to make the invention seem more like an abstract idea, unpatentable under 35 USC 101.The disclosure should not be purposely made incomprehensible, but all of the details of the invention and its implementation should be disclosed.

And finally, the drafter can try to steer examination of the application to an art unit that is less inclined raise Section 101 or 112 rejections, by careful wording of the title and claims. The classification process in the USPTO is not as precise as the Sorting Hat in Harry Potter, and the drafter does have some control over in which "house" an application ends up.

In view of the dynamic nature of federal case law interpreting the application of Section 101 and 112 and corresponding Patent Office procedures, one tip is to consider drafting patent applications in which the subject matter of the invention is described in multiple ways, often with consideration of embodying the invention as an apparatus, method, or other medium, according to Uribe. Having sufficient technical support for different types of claiming formats increases the likelihood that claims of a patent can be leveraged, even if the definition of patentable subject matter or how it should be described in an application may change.

Related stories: 5 factors that affect PTAB's inter partes review Will the Supreme Court gives us clear direction on inter partes reviews? Covering new terrain: Early lessons from the first wave of PTAB appeals to the Federal Circuit

PTAB decisions show that rate of unpatentability findings is overstated
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Publication:Inside Counsel Breaking News
Date:Jun 7, 2016
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