PATENT PRACTICE AND PROCEDURE

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PATENT PRACTICE AND PROCEDURE

• FRANKLIN PIERCE
• LAW CENTER
• IPSE 99
• Kevin J. Carroll
• Robert Deleault
• Michael J. Persson
• William Ritchie

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Kevins Office Hours E-mail

• Office Hours
• Following class 1030-11
• E-mail
• kcarroll_at_fplc.edu or kevin_at_carroll.mv.com

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Teaching Assistant

• TA Sessions - TBA

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Patent Practice Overview

• Draft claims Classes 1- 4
• Prepare and file application Class 5
• Receive and respond to Office Action Classes
  6-9
• Allowance and post-issuance Class 10
• Understanding and Interacting with Patent
  Examiners Class 11

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Course Requirements

• Class
• Lecture 8-925
• Small Section 930-1030
• Assignments
• Claim Drafting
• Reading
• Statutes (35 U.S.C.) and Rules (37 CFR)
• Cases
• Manual of Patent Examining Procedure (MPEP)
• Grade
• Final Claim Drafting - 50
• Final Exam - 50

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Why Is There A Patent System?

• What is the purpose of a patent?

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THE CONSTITUTIONAL PROVISION

• The Congress shall have power To promote the
  progress of science and useful arts, by securing
  for limited times to authors and inventors the
  exclusive right to their respective writings and
  discoveries. Art. 1, Sec. 8, Cl. 8. (Emphasis
  Added)

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Cheeseburger
Bun
Cheese
Beef Patty
Bun
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Improved Cheeseburger
Bun
Special Sauce
Beef Patty
Tomato
Bun
Cheese
Beef Patty
Lettuce
Bun
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How is the scope of the exclusive right defined?
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Basic Functions and Parts of a Patent

USEFUL ARTS
PUBLIC
DISCLOSURE
EXCLUSIVE RIGHT
INVENTOR
CLAIMS
PATENT
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Ex parte Fressola

• The Function of Patent Claims

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What is the claimed invention?

• A system for the display of stereographic
  three-dimensional images of celestial objects as
  disclosed in the specification and drawings
  herein.
• Commonly referred to as an Omnibus Claim

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What are the grounds for the rejection?

• 35 U.S.C. 112, 2nd paragraph
• The specification shall conclude with one or more
  claims particularly pointing out and distinctly
  claiming the subject matter which the applicant
  regards as his invention.

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A Shift in Method of Claiming

• CENTRAL DEFINITION
• PERIPHERAL DEFINITION

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Claim Functions

• DEFINITIONAL FUNCTION
• NOTICE FUNCTION

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Statutory Types of Claims35 U.S.C. 101

• Machine (or apparatus) claims
• Manufacture (or article) claims
• Process (or method) claims
• Method of making
• Method of using
• Composition claims

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Claim Structure and Format

• 35 U.S.C. 112
• 37 CFR 1.75
• MPEP 608.01(m)

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Independent or Dependent Form35 U.S.C. 112, 3

• Independent Claim
• Does not refer to another claim
• Stands alone
• Dependent Claim - 35 U.S.C. 112, 3-5, 37 CFR
  1.75(c)
• Refers to previous claim(s)
• Incorporates subject matter of previous claims
  referred to

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• Claims section begins with
• The invention claimed is
• What is claim is
• I (or we) claim
• Single Sentence - begins with a capital letter
  and ends with a period
• Periods may not be used elsewhere in a claim
  except for abbreviations. See Fressola v.
  Manbeck, 36 USPQ2d 1211 (D.D.C. 1995)
• Each element recited in claim should be indented
  37 CFR 1.75(i)
• Multiple claims are consecutively numbered - 37
  CFR 1.75(f), 1.126

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Basic Parts of Independent Claim

• Preamble
• names the invention
• Transition
• Introduces the elements and limitations that make
  up the invention
• Body
• Recites the elements and limitations
• Positively reciting elements v. inferential
  claiming
• Provide antecedent basis
• Provide interrelationships between elements

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The invention claimed is
Preamble

• 1. A cheeseburger for consumption comprising
• first and second buns
• a patty positioned between said first and
  second buns and
• a slice of cheese melted on said patty.

Transition
Body
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Further Defining an Element
Refers to previous claim
Consecutive Numbering
Consistent Preamble

• 2. The cheeseburger of claim 1 wherein said patty
  is made of ground beef.
• Claim 2 is equivalent to an independent claim
• A cheeseburger for consumption comprising
• first and second buns
• a beef patty positioned between said first and
  second buns and
• a slice of cheese melted on said patty.

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Adding an Element

• 3. The cheeseburger of claim 1 further including
  a piece of lettuce disposed between said patty
  and said first bun.
• Claim 3 is equivalent to an independent claim
• A cheeseburger for consumption comprising
• first and second buns
• a beef patty positioned between said first and
  second buns
• a slice of cheese melted on said patty and
• a piece of lettuce disposed between said patty
  and said first bun.

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Method Claims

• 1. A method of making a cheeseburger, said
  method comprising
• forming at least one patty
• cooking said patty
• melting a piece of cheese on said patty
• placing said patty with said cheese between
  first and second buns.
• 2. The method of claim 1 further including
  placing a piece of lettuce between said patty and
  one of said buns.
• 3. The method of claim 1 wherein said patty is
  made of ground beef.

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Multiple Dependent Claims

• Any dependent claim which refers to more than one
  other claim shall refer to such other claims in
  the alternative only - 35 U.S.C. 112, 5 37 CFR
  1.75(c)
• A multiple dependent claim cannot depend from
  another multiple dependent claim - 35 U.S.C. 112,
  5 37 CFR 1.75(c)
• Advantage saves space
• Disadvantage expensive, confusing

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Acceptable Multiple Dependent Claim Wording

• A gadget according to claims 3 or 4 . . .
• A gadget as in any one of the preceding claims .
  . .
• A gadget as in either claim 1 or claim 2 . . .
• A gadget as in one of claims 1-7

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Unacceptable Multiple Dependent Claim Language

• A gadget according to claim 3 and 4 . . .
• A gadget according to claims 1-3 . . .
• A gadget as in the preceding claims . . .
• A gadget in any of the following claims . . .
• A gadget as in claim 1 or 4 made by the process
  of claims 5, 6, 7 or 8 . . .

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Improper Multiple Dependency

• 5. A gadget as in claims 3 or 4 . . .
• 6. A gadget as in claims 4 or 5 . . .