Thursday, 31 December 2015

How to Draft Claim 1 of a Patent Application

1. Think carefully about what you want to convey in claim 1. Claim 1 does of course define the scope of protection you are seeking. However it also ‘presents’ (perhaps even ‘showcases’) the invention, and you want to give the impression that you have contributed something to the art. Therefore try to ensure claim 1 is novel and has something which looks at least a little bit clever. You don’t want the Examiner to (psychologically) ‘dismiss’ your application as being the same as something in the prior art or a trivial improvement. So first impressions do count.

2. To present your invention impressively consider drafting a claim 1 that reflects the technical problem being solved. So the following claim:

‘A method of making a protein detectable in NMR comprising methylating it by a process comprising….’

Is more impressive than

‘A process for methylating a protein comprising…

So consider adding words and terms to your claim that reflect the complexity of the invention and all the advantages/contributions. Whether or not these words and terms are actual limiting features it will help the Examiner understand the true contribution better.

3. You can also use optional features in claims to highlight certain features. So if you say something like:

‘…wherein optionally the sequence is identified by a [clever method]’

Then the Examiner will be able to appreciate how clever/special the sequence must be if it needed the clever method to identify it. So the optional bit can help to make the other parts of the claim look impressive, without limiting the claim. Be careful here about the risk of the Examiner seeing the optional features as essential features.

4. There are often advantages in putting method claims first. However this depends on the specific situation, and you need to bear in mind the commercial situation, ease of enforcement of product claims, and the fact that if you get lack of unity only the first claim might be searched. Essentially with some inventions method claims can be written in a way that better reflects the inventive concept, and later product claims that refer to the method claims have some chance of benefiting from the language of the method claim, at least at a psychological level in the Examiner’s mind.

5. This is a more subtle point, but where the invention is complex then write the claim so that you spread the ‘invention’ (i.e. contribution) over lots of features of the claim. So make sure you don’t write a 2 part type claim ( where the contribution is going to be defined in the second part. Instead try to convey the inventive concept as deriving from contributions of several features, if possible and/or that more than one feature is clever.

Wednesday, 12 August 2015

Monday, 2 February 2015

Our IPKat Posts on the USPTO Guidance, China, Forsgren's SPC and Biotech Financing

We've been writing for the IPKat blog. Here are some of our recent posts on that blog:

The New USPTO Interim Guidance on Patent Subject Matter Eligibility

This post briefly describes the latest guidance based on the Mayo, Myriad and Alice cases, giving a brief history of how 'eligibility' has evolved from the Bilski case onwards.

China's IP journey: from 'bad guys' to 'good guys' to patent superpower

A brief history of how China's patent system developed, often in line with its own interests, and what other countries might learn from it.

Forsgren's SPC; what does the marketing authorisation have to say about the active ingredient

This reviews a recent decision on an SPC from the CJEU, and places it in the context of SPC case law.

Biotech financing: the risk components, 'going long' and patents as knowledge currency

A review of the early stage financing landscape in the area of therapeutics and how collaborations and ecosystems are becoming increasingly important, thus changing the way that patents are used.

Monday, 22 December 2014

Even More on the New Eligibility Guidance, Myriad and Promega v Life Tech

The new Guidance is available here. A PDF version is available here. The associated ‘Nature-Based Products’ examples are available here.

A further article from IPWatchdog discussing the new guidance can be found here. It discusses in detail how the new guidance differs from the previous one and how this should mean that more computer-implemented inventions will be found to be eligible. Whilst the IPWatchdog blog has had the most negative reaction to the Alice decision of all the blogs we read, it is also the one that has had the most informative comments on the implications of the changes in law in this area.

In another post IPWatchdog discusses the ‘significantly more’ part of the Alice test and how this can be shown (see here).

Personalised Medicine Bulletin discusses the life sciences aspects of new guidance with a focus on the new Myriad decision (see here). It notes the ‘markedly different’ analysis which can be used to support eligibility of products related to natural products.

Pepper Hamilton discuss the Myriad decision here, and comment on what it means for biotech and diagnostics patents in general.

PatentlyO discusses Promega v Life Tech here. This is about enablement of a claim where the term ‘comprising’ brings in other embodiments which are not shown to be enabled, i.e. combinations of loci that might not co-amplify. This seems a much stricter way of looking at enablement than in Europe.

Our previous posts on the new guidance can be found here and here.

Thursday, 18 December 2014

More on the New Eligibility Guidance and In re BRCA1- and BRCA2-Based Heredity Cancer Test Patent Litigation (Fed. Cir. 2014)

The New Interim Guidance on Subject Matter Eligibility

The new Guidance is available here. A PDF version is available here. The associated ‘Nature-Based Products’ examples are available here.

PatentDocs have now posted their analysis of the impact of the new guidance on business and software inventions here. Mintz Levin’s post about the guidance can be found here. Our previous post can be found here.

The Federal Circuit held Myriad’s claims to screening for BRCA1 and BRCA2 mutations (by probing or sequencing) to PCR primers as ineligible. The screening method was found to relate to an abstract idea. The primers were found to not be distinguishable from the DNA claims found invalid by the Supreme Court.

PatentDocs’ post on this is here. PatentlyO’s detailed review can be found here.

Wednesday, 17 December 2014

Roundup of Tech and Developing World Issues

1. ‘Pharmaceutical Patent Enforcement: A Developmental Perspective’ is an article about the complex issue of how India should deal with pharma patents, taking into accounts its obligations under TRIPS.  You may also wish to see our related posts ‘6 Academic Articles on Changing TRIPS and the Global IP System’ and ‘10 Points on the Max Planck Institute’s Declaration on Patent Protection’.

2. ‘Building Competitive Green Industries’ is a report by infoDev into business opportunities for developing countries in sectors relating to climate change related and clean technology. The report takes the optimistic view that climate change represents an opportunity for developing nations to benefit from development of green and clean technologies. Whether or not one agrees with this it is for developing countries to prepare for climate change as best as they can, and this report presents options they can take.

3. ‘Making Sense of the CETA’ is a critical analysis the Canadian-European trade agreement. It raises critical questions about how much power a trade agreement should have to interfere with issues of public importance. The reason why we have included it in this post is to highlight the issues that the developing world needs to consider when entering into trade agreements.

4. A WIPO seminar on the ‘Evolution of Technology Diffusion’ provides insights into the difficulties of transferring innovation around the globe. See a paper here on the same topic.

5. See here for a McKinsey report on how Southeast Asia can benefit from disruptive technologies.

6. See here for Mariana Mazzucato arguing for government intervention in markets.

7. See here for the World Economic Forum’s choice of the top 10 tech innovations of 2014.