Prosecution Related Issues
Prosecution History Estoppel
Patent Infringement
Document Maintenance
Background of the Invention
This section should include a statement of the field of endeavor to which the
invention pertains. This section may also include a paraphrasing of the
applicable US patent Classification Definitions or the subject matter of the
claimed invention. In the past, this part of this section may have been titled
"Field of Invention" or "Technical Field."
This section should also contain a description of information known to you,
including references to specific documents, which are related to your invention.
It should contain, if applicable, references to specific problems involved in
the prior art (or state of technology) which your invention is drawn toward. In
the past, this section may have been titled "Description of the Related Art" or
"Description of Prior Art."
Brief Summary of the Invention
This section should present the substance or general idea of the claimed
invention in summarized form. The summary may point out the advantages of the
invention and how it solves previously existing problems, preferably those
problems identified in the BACKGROUND OF THE INVENTION. A statement of the
object of the invention may also be included.
Brief Description of the Several Views of the Drawing
Where there are drawings, you must include a listing of all figures by number
(e.g., Figure 1A) and with corresponding statements explaining what each figure
depicts.
Detailed Description of the Invention
In this section, the invention must be explained along with the process of
making and using the invention in full, clear, concise, and exact terms. This
section should distinguish the invention from other inventions and from what is
old and describe completely the process, machine, manufacture, composition of
matter, or improvement invented. In the case of an improvement, the description
should be confined to the specific improvement and to the parts that necessarily
cooperate with it or which are necessary to completely understand the invention.
It is required that the description be sufficient so that any person of ordinary
skill in the pertinent art, science, or area could make and use the invention
without extensive experimentation. The best mode contemplated by you of carrying
out your invention must be set forth in the description. Each element in the
drawings should be mentioned in the description. This section has often, in the
past, been titled "Description of the Preferred Embodiment."
Claim or Claims
The claim or claims must particularly point out and distinctly claim the subject
matter which you regard as the invention. The claims define the scope of the
protection of the patent. Whether a patent will be granted is determined, in
large measure, by the choice of wording of the claims.
A nonprovisional application for a utility patent must contain at least one
claim. The claim or claims section must begin on a separate sheet. If there are
several claims, they shall be numbered consecutively in Arabic numerals, with
the least restrictive claim presented as claim number 1.
The claims section must begin with a statement such as "What I claim as my
invention is: . . ." or "I (We) claim: . . ." followed by the recitation of the
particular matter which you regard as your invention.
One or more claims may be presented in dependent form, referring back to and
further limiting another claim or claims in the same application. All dependent
claims should be grouped together with the claim or claims to which they refer
to the extent practicable. Any dependent claim that refers to more than one
other claim ("a multiple dependent claim") shall refer to such other claims in
the alternative only. Each claim should be a single sentence, and where a claim
sets forth a number of elements or steps, each element or step of the claim
should be separated by a line indentation.
The fee required to be submitted with a nonprovisional utility patent
application is, in part, determined by the number of claims, independent claims,
and dependent claims.
Each element in an independent claim (i.e., a claim that does not refer to
another claim) does not have to be novel, but at least one claim element (i.e.,
clause or limitation), must be novel. Generally, claim limitations that are not
novel should be included if it is technically accurate and necessary to carry
out the required function/structure of at least the most basic application of
the invention. Novelty is evaluated by considering all limitations within a
given claim together. It is common to name elements/functions in a claim that
are not novel, but are necessary to describe how the novel aspects of your
invention cooperate with the known elements.
Each element in a dependent claim (i.e., a claim that does refer to another
claim) does not have to be novel, and should be included if it is technically
accurate and a commercially viable function/structure/instance that is either
novel or, if not novel, that a competitor might carry out in combination with
the root claims. Novelty is evaluated by evaluation of the independent claim
limitations together with the dependent claim limitations.
Abstract of the Disclosure
The purpose of the abstract is to enable the USPTO and the public to determine
quickly the nature of the technical disclosures of your invention. The abstract
points out what is new in the art to which your invention pertains. It should be
in narrative form and generally limited to a single paragraph, and it must begin
on a separate page. An abstract should not be longer than 150 words.
Information Disclosure Statement
The USPTO requires the filing of an Information Disclosure Statement (IDS) with
copies of all relevant publications (patents or otherwise) known to the
inventor. The IDS is usually filed after receiving the official filing receipt
from the USPTO, about three months after filing the application. Attorneys
generally charge an IDS preparation fee, and there might be additional fees from
document suppliers, if you cannot supply a copy of a reference and your
practitioner needs to procure it elsewhere. It is usually recommended that you
provide your practitioner with copies of all publications you know about before
they file your application (ideally, before the first draft is prepared). Note
that if you become aware of any references which are relevant to patentability
during the pendency of the patent, for example if a foreign patent office cites
patents against a foreign counterpart of the US application, a Supplemental IDS
should be filed with the references.
Prosecution Related Issues
There are many actions that occur during the prosecution of a patent application
that can significantly affect the resulting patent after being granted.
Many of these issues show up during patent infringement litigation in the
courts. What follows, is a highlight of some of these pertinent issues.
A skilled patent drafter should attempt to foresee the limiting potential of a
claim limitation. Sometimes subtlety of language or complexity of the
technology, or any subsequent change in the state of the art, such as
later-developed technology, may, however, obfuscated the significance of this
limitation at the time of its incorporation into the claim. There is an
opportunity to broaden patent protection by seeking claims with fewer structural
encumbrances or method steps. If the claims are drawn too narrow, then patent
scope may not be recovered by what is known as the doctrine of equivalents. The
patentee has an opportunity to negotiate broader claims up to two years after
patent issuance, where afterwards, it is the patentee who must bear the cost of
its failure to seek protection for any foreseeable alteration of its claimed
structures or steps.
The claims define the scope of protection for a patent afforded to the actual
inventor. Patent law requires the applicant to swear, or affirm, that he
believes himself to be the true inventor of the art, machine, or improvement,
for which he asks for a patent; and further that he shall deliver a written
description of his invention, in such full, clear, and exact terms, that any
person, acquainted with the art, may know how to construct and use the same. The
reason for this is to guard the public against unintentional infringements of
the patent, and to enable the public to make an improvement that does not
infringe your patent. When an accused device possess every limitation of a claim
in your patent, then that device or process has comitted literal infringement of
your patent. However, the language in the patent claims may not capture every
nuance of the invention or describe with complete precision the range of its
novelty. If patents were always interpreted by their literal terms, their value
would be greatly diminished. Unimportant and insubstantial substitutes for
certain elements could defeat the patent, and its value to inventors could be
destroyed by simple acts of copying. For this reason, the clearest rule of
patent interpretation, literalism, may conserve judicial resources but is not
necessarily the most efficient rule. The scope of a patent is not limited to its
literal terms but instead embraces all equivalents to
the claims described. In this way, a balance between the two competing policies
behind the enforcement of patent rights: (1) to protect the inventor’s right to
exclude others who might steal the product of his work by making equivalent
modifications, and (2) to provide clear notice to the public of the invention’s
boundaries.
In generic terms: in determining the patentably of your your invention, the
Patent Office must consider utility, novelty, obviousness,
and so called "secondary considerations." Generally, if your product or process
does something useful that a "close" one does not, then your product would
logically be novel. You must then question if the additional features or
functions that you are claiming as novel would have been obvious to do for an
average person skilled in the field of your invention. If the novelty is clearly
not obvious to an average skilled artisan, then your invention would very likely
be patentable, all other things being equal. If your invention's novelty is
questionably obvious, then the fallback argument, although some what weaker, is
to set forth any secondary consideration that relate to the commercial viability
of your product over the others in question. For the more complicated case where
your invention is questionably obvious, read on...
Patent law is designed to serve the small inventor as well as the giant research
organization. One fact to keep in mind is that most, if not all, inventions are
combinations and mostly of old elements. Therefore an examiner may often find
every element of a claimed invention in the prior art. If identification of each
claimed element in the prior art were sufficient to reject patentability of your
invention, then very few patents would ever issue. Patent examiners are not
allowed to reject patents solely by finding your claimed elements in the prior
art. If that were allowed it would permit an examiner to use the claimed
invention itself as a blueprint for piecing together elements in the prior art
to defeat the patentability of patents. The courts have said such an approach
would be an illogical and inappropriate process by which to determine
patentability.
You should also be aware that it is not a requirement of patentability that an
inventor correctly set forth, or even know, how or why the invention works.
Generally, the claimed invention must be considered as a whole, and the question
is whether there is something in the prior art as a whole to suggest the
desirability, and thus the obviousness, of making the combination. When
determining the patentability of a claimed invention which combines two known
elements, the question is whether there is something in the prior art as a whole
to suggest the desirability, and thus the obviousness, of making the
combination.
To prevent the use of hindsight based on the invention (i.e., viewing the
prior-art in terms of what your invention or the art after your filing date
teaches) to defeat patentability of the invention, courts require the examiner
to show a motivation to combine the references that create the case of
obviousness. In other words, the examiner must show reasons that the skilled
artisan, confronted with the same problems as the inventor and with no knowledge
of the claimed invention, would select the elements from the cited prior art
references for combination in the manner claimed.
Courts have identified three possible sources for a motivation to combine
references: the nature of the problem to be solved, the teachings of the prior
art, and the knowledge of persons of ordinary skill in the art. It is not
allowed for the examiner to just rely on the high level of skill in the art to
overcome the differences between the claimed invention and the selected elements
in the references, and provide the necessary motivation.
Instead, the examiner, if rejecting your claim based on obviousness, must
explain what specific understanding or technological principle within the
knowledge of one of ordinary skill in the art would have suggested the
combination. Otherwise, if a rote piecing together of prior-art elements could
suffice to supply a motivation to combine, the more sophisticated scientific
fields would rarely, if ever, experience a patentable technical advance. That
is, for example, in complex scientific fields, the examiner could routinely
identify the prior art elements in an application, invoke the lofty level of
skill, and rest its case for rejection. To counter this potential weakness in
the obviousness construct, the suggestion to combine requirement stands as a
critical safeguard against hindsight analysis and rote application of the legal
test for obviousness.
Obviousness is ultimately a question of law that rests on underlying factual
inquiries including: (1) the scope and content of the prior art; (2) the level
of ordinary skill in the art; (3) the differences between the claimed invention
and the prior art; and (4) objective considerations of nonobviousness. Objective
considerations such as failure by others to solve the problem and copying may
often be the strongest evidence of nonobviousness.
This objective evidence of nonobviousness includes so-called "secondary
considerations" such as copying, long felt but unsolved need, failure of others,
commercial success, unexpected results created by the claimed invention,
unexpected properties of the claimed invention, licenses showing industry
respect for the invention, and skepticism of skilled artisans before the
invention
The so-called "secondary considerations" provide evidence of how the patented
device is viewed by the interested public: not the inventor, but persons
concerned with the product in the objective arena of the marketplace.
Prosecution History Estoppels
Traditionally, the doctrine of prosecution history estoppels has been defined as
an equitable tool for determining the scope of patent claims. The doctrine bars
the patentee from construing its claims in a way that would resurrect subject
matter previously surrendered during prosecution of the patent application, and
thus prevents a patentee from enforcing its claims against otherwise legally
equivalent structures if those structures were excluded by claim limitations
added to avoid prior art. The traditional view that depending upon the nature
and purpose of an amendment, the doctrine may have a limiting effect within a
spectrum ranging from great to small to zero was recently changed by the federal
circuit. Accordingly, all amendments made for the purpose of patentability are
now deemed to have the effect of depriving the inventor of a claim
interpretation that includes equivalent structures.
Generally, an amendment that narrows the scope of a claim for any reason related
to the statutory requirements of a patent will give rise to prosecution history
estoppel with respect to the amended claim element. That is, while the patentee
has the right to appeal, his decision to forgo an appeal and submit an amended
claim is taken as a concession that the invention as patented does not reach as
far as the original claim. That is, where the original application once embraced
the purported equivalent but the patentee narrowed his claims to obtain the
patent or to protect its validity, the patentee cannot assert that he lacked the
words to describe the subject matter in question. The doctrine of equivalents is
premised on language's inability to capture the innovation, but a prior
application describing the precise element at issue undercuts that premise. In
that instance the prosecution history has established that the inventor turned
his attention to the subject matter in question, knew the words for both the
broader and narrower claim, and affirmatively chose the latter.
Estoppel general arises when an amendment is made to secure the patent and the
amendment narrows the patent's scope. If a §112 amendment
is truly cosmetic, then it would not narrow the patent's scope or raise an
estoppel. On the other hand, if a §112 amendment
is necessary and narrows the patent's scope -- even if only for the purpose of
better description - estoppel may apply. A patentee who narrows a claim as a
condition for obtaining a patent disavows his claim to the broader subject
matter, whether the amendment was made to avoid the prior art or to comply with
§112.
The courts regard the patentee as having conceded an inability to claim the
broader subject matter or at least as having abandoned his right to appeal a
rejection. In either case estoppel may apply, especially when the patentee is
unable to explain the reason for amendment, estoppel not only applies but also
bars the application of the doctrine of equivalents as to that element. Case law
makes clear that the patentee should bear the burden of showing that the
amendment does not surrender the particular equivalent in question, and that the
patentee, as the author of the claim language, may be expected to draft claims
encompassing readily known equivalents. Hence, a patentee's decision to narrow
his claims through amendment may be presumed to be a general disclaimer of the
territory between the original claim and the amended claim.
By amending the application, the inventor is deemed to concede that the patent
does not extend as far as the original claim. It does not follow, however, that
the amended claim becomes so perfect in its description that no one could devise
an equivalent. After amendment, as before, language remains an imperfect fit for
invention. The narrowing amendment may demonstrate what the claim is not; but it
may still fail to capture precisely what the claim is. Case law makes clear,
however, that there is no reason why a narrowing amendment should be deemed to
relinquish equivalents unforeseeable at the time of the amendment and beyond a
fair interpretation of what was surrendered. Nor is there any call to foreclose
claims of equivalence for aspects of the invention that have only a peripheral
relation to the reason the amendment was submitted, or if there was some other
reason suggesting that the patentee could not reasonably be expected to have
described the insubstantial substitute in question. In such cases the patentee
can overcome the presumption that prosecution history estoppel bars a finding of
equivalence.
Canceling claims and replacing with narrower versions may create estoppel as
well. For example, consider the case where certain rejected claims were never
amended, but instead canceled and replaced with claims containing a more narrow
scope, which are later issued with a patent. In this example, the courts will
not discern any legally significant difference between canceling a claim having
a broad limitation and replacing it with a claim having a narrower limitation,
and amending a claim to narrow a limitation, since to do so "would place form
over substance and would undermine the rules governing prosecution history
estoppel laid out in Festo by allowing patent applicants
simply to cancel and replace claims for reasons of patentability rather than to
amend them". Thus, canceling and replacing claims is considered analogous to
amending them.
The presumption prosecution history estoppel is not just a complete bar by
another name. Rather, it reflects the fact that the interpretation of the patent
must begin with its literal claims, and the prosecution history is relevant to
construing those claims. When the patentee has chosen to narrow a claim, courts
may presume the amended text was composed with awareness of this rule and that
the territory surrendered is not an equivalent of the territory claimed. In
those instances, however, the patentee still might rebut the presumption that
estoppel bars a claim of equivalence. The patentee must show that at the time of
the amendment one skilled in the art could not reasonably be expected to have
drafted a claim that would have literally encompassed the alleged equivalent.
The courts reason that explicit arguments made during prosecution to overcome
prior art can lead to narrow claim interpretations makes sense, because the
public has a right to rely on such definitive statements made during prosecution
as public notice, which is regarded as an important function of the patent
prosecution process. By distinguishing the claimed invention over the prior art,
an applicant is explicitly indicating what the claims do not cover. Therefore, a
patentee, after relinquishing subject matter to distinguish a prior art
reference asserted by the PTO during prosecution, cannot during subsequent
litigation escape reliance by the defendant upon this unambiguous surrender of
subject matter. Accordingly, claims may not be construed one way in order to
obtain their allowance and in a different way against accused infringers.
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