How Not to Draft a Patent Application

Imagine the following hypothetical scenario. As a patent practitioner, you are given an invention disclosure and asked to prepare a utility application by the end of the week. Unfortunately, the inventor is out of town on business and is unavailable. The invention disclosure includes a one-page invention report, with a few paragraphs giving a basic description of the invention, which is a combination office heater/trash disposal device. The disclosure also describes when the product is expected to be on the market, and includes some sketches of a prototype. There is no description of similar products or related patents, and no examples of data demonstrating effectiveness. After conducting a short, informal search of the art, you draft the application. The specification describes the embodiment shown in the sketches, but the claims are broadly drafted to cover a variety of heater/trash disposal devices. The invention disclosure did not describe any advantages provided by the new device, so none are described in the application.

While the above hypothetical is certainly a less than ideal situation, it is not unusual. Patent drafters must often write a patent application based on minimal disclosure. Some practitioners take pride in their ability to do so. However, several recent landmark court cases have substantially increased the risk that a patent drafted in this manner will be unenforceable.

Cases in Point

Festo Corp. v. Shoketsu Kinzoku Co. Ltd.

The first case creating additional obstacles for our hypothetical patent application is Festo Corp. v. Shoketsu Kinzoku Co. Ltd., 535 U.S. 722 (2002). In Festo, the Supreme Court held that there is a presumption that a claim amendment was made for a reason related to patentability, with limited avenues to rebut this presumption. Festo significantly expanded the doctrine of prosecution history estoppel, thereby creating an environment that is hostile to the Doctrine of Equivalents. The Doctrine of Equivalents has historically been used to permit a court to find infringement when an accused product or process falls outside of the literal language of the claims, but is equivalent and differs only insubstantially from the claimed invention. Because most claim amendments will now eliminate the possible application of the Doctrine of Equivalents, it is very important to draft claims that can be allowed without amendment.

In order to draft claims that can be allowed without amendment, it is crucial that you understand the prior art. However, in the above hypothetical, no formal search of the prior art was carried out. Clients often lack the skill and expertise to evaluate the prior art, and can be reluctant to spend the money necessary for a separate patentability search. Patent drafters, on the other hand, often work under a tight schedule when drafting applications. This makes it all too easy to shortcut a thorough evaluation of the prior art in order to minimize the amount of time spent. As a result, prior art searching is often left to the Patent Office. However, this approach will almost inevitably result in claims that must be amended during prosecution for reasons relating to patentability. Under Festo, this forfeits access to the Doctrine of Equivalents, resulting in claims that are effectively narrower in scope and more difficult to enforce.

Phillips v. AWH Corp.

The next case creating obstacles for our hypothetical patent application is Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), which had a dramatic effect on claim construction. Historically, patent drafters tended to draft claims as broadly as possible to provide the most protection for their client's invention. Less emphasis may have been placed on the technical description and background of the patent application, because the judiciary gave significant deference to broad claim language. Definitional fights over claim terms, if they occurred in litigation, would often be resolved by battles between experts. Furthermore, the principle that a court could not read a limitation from a preferred embodiment into a claim, absent its explicit inclusion, was frequently used to divorce claim interpretation from the specification. However, in Phillips, the Federal Circuit signaled that the words of patent claims should not be interpreted in isolation, and that the specification could be used to more narrowly interpret the claims in a number of situations.

For example, our hypothetical patent application would unlikely be able to withstand the rigors of claim construction analysis under Phillips. As you will recall, the patent application described only a single embodiment, but included claims broadly drafted to cover a variety of heater/trash disposal devices. Under Phillips, a patent specification providing only a single embodiment may well result in the scope of the claims being limited to the single embodiment described, which again results in a significant decrease in claim scope. Phillips and subsequent cases also created a number of other potential pitfalls for patent drafters. For example, comments distinguishing the invention from the prior art may limit the claims, and highlighting the importance of a non-claimed feature or the benefits of the invention can also narrow the claims. It is thus crucial for you to draft a patent such that it contains multiple embodiments and appropriately broad characterizations of the invention, while avoiding any language that could limit the invention to the particular aspects of the invention that have been described.

KSR v. Teleflex

The final new hurdle for our patent application is the standard for obviousness articulated by the Supreme Court in KSR v. Teleflex, 550 U.S. ___, 127 S. Ct. 1727 (2007). Specifically, the Court held that in order to demonstrate obviousness it was not necessary to satisfy the teaching/suggestion/motivation (TSM) test, that 'obvious to try' arguments are not precluded, and the Federal Circuit had been too rigidly constricting the use of hindsight. Taken together, these holdings have made it more difficult for patent owners to demonstrate that their invention is non-obvious, both during prosecution and later during possible litigation.

The full impact of KSR on patent drafting has not yet been completely evaluated. However, in the wake of KSR it appears likely that it is more important for a patent drafter to describe the advantages of the invention in the application itself, rather than rely on arguments during prosecution as to why prior art documents should not be combined. Advantages of the invention, in particular unexpected results, are a powerful means for rebutting an assertion of obviousness. However, as described in In re Davies 475 F.2d 667 (C.C.P.A. 1973) and other cases, support for the unexpected results should be included in the specification. Evidence of undisclosed advantages is otherwise accepted only if it would 'inherently flow' from what was disclosed. Id. at 670.

As noted above, the advantages of the combination office heater/trash disposal device were not described in our hypothetical application because none were provided in the disclosure. In addition, since data demonstrating effectiveness was also not provided, it will be difficult to provide that data during prosecution to demonstrate advantages of the invention unless they inherently flows from what was provided. Accordingly, if the claims of the patent are found to be obvious in view of office heaters and trash disposal devices ' a rejection that is easier to sustain subsequent to KSR ' it will now be difficult to rebut this assertion of obviousness. It is thus more likely under KSR that our hypothetical patent application will never issue as a patent, or may later be found to be invalid for reason of obviousness if it does.

How Not to Draft an Application

This hypothetical thus provides several examples of how not to draft a patent application. For example, you should not:

• draft a patent application without a thorough review of the prior art;
• draft a patent application that includes only a single embodiment of the invention; or
• draft a patent application that does not describe or provide data supporting advantages of the invention as a whole.

A patent drafted without a thorough review of the prior art will likely result in the need to amend the claims, which will reduce the effective scope of the claims under Festo. A patent drafted that includes only a single embodiment may result in claims that are interpreted to encompass only the embodiment provided under Phillips. Finally, a patent that does not describe or provide data supporting the advantages of the invention may well be found to be obvious under the definition of obviousness provided by KSR. It is thus more important than ever to educate your clients regarding the information needed to prepare a proper patent application, and to thoroughly discuss the scope and advantages of the invention before putting pen to paper.

Imagine the following hypothetical scenario. As a patent practitioner, you are given an invention disclosure and asked to prepare a utility application by the end of the week. Unfortunately, the inventor is out of town on business and is unavailable. The invention disclosure includes a one-page invention report, with a few paragraphs giving a basic description of the invention, which is a combination office heater/trash disposal device. The disclosure also describes when the product is expected to be on the market, and includes some sketches of a prototype. There is no description of similar products or related patents, and no examples of data demonstrating effectiveness. After conducting a short, informal search of the art, you draft the application. The specification describes the embodiment shown in the sketches, but the claims are broadly drafted to cover a variety of heater/trash disposal devices. The invention disclosure did not describe any advantages provided by the new device, so none are described in the application.

While the above hypothetical is certainly a less than ideal situation, it is not unusual. Patent drafters must often write a patent application based on minimal disclosure. Some practitioners take pride in their ability to do so. However, several recent landmark court cases have substantially increased the risk that a patent drafted in this manner will be unenforceable.

Cases in Point

Festo Corp. v. Shoketsu Kinzoku Co. Ltd.

The first case creating additional obstacles for our hypothetical patent application is Festo Corp. v. Shoketsu Kinzoku Co. Ltd. , 535 U.S. 722 (2002). In Festo, the Supreme Court held that there is a presumption that a claim amendment was made for a reason related to patentability, with limited avenues to rebut this presumption. Festo significantly expanded the doctrine of prosecution history estoppel, thereby creating an environment that is hostile to the Doctrine of Equivalents. The Doctrine of Equivalents has historically been used to permit a court to find infringement when an accused product or process falls outside of the literal language of the claims, but is equivalent and differs only insubstantially from the claimed invention. Because most claim amendments will now eliminate the possible application of the Doctrine of Equivalents, it is very important to draft claims that can be allowed without amendment.

In order to draft claims that can be allowed without amendment, it is crucial that you understand the prior art. However, in the above hypothetical, no formal search of the prior art was carried out. Clients often lack the skill and expertise to evaluate the prior art, and can be reluctant to spend the money necessary for a separate patentability search. Patent drafters, on the other hand, often work under a tight schedule when drafting applications. This makes it all too easy to shortcut a thorough evaluation of the prior art in order to minimize the amount of time spent. As a result, prior art searching is often left to the Patent Office. However, this approach will almost inevitably result in claims that must be amended during prosecution for reasons relating to patentability. Under Festo, this forfeits access to the Doctrine of Equivalents, resulting in claims that are effectively narrower in scope and more difficult to enforce.

Phillips v. AWH Corp.

The next case creating obstacles for our hypothetical patent application is Phillips v. AWH Corp. , 415 F.3d 1303 (Fed. Cir. 2005), which had a dramatic effect on claim construction. Historically, patent drafters tended to draft claims as broadly as possible to provide the most protection for their client's invention. Less emphasis may have been placed on the technical description and background of the patent application, because the judiciary gave significant deference to broad claim language. Definitional fights over claim terms, if they occurred in litigation, would often be resolved by battles between experts. Furthermore, the principle that a court could not read a limitation from a preferred embodiment into a claim, absent its explicit inclusion, was frequently used to divorce claim interpretation from the specification. However, in Phillips, the Federal Circuit signaled that the words of patent claims should not be interpreted in isolation, and that the specification could be used to more narrowly interpret the claims in a number of situations.

For example, our hypothetical patent application would unlikely be able to withstand the rigors of claim construction analysis under Phillips. As you will recall, the patent application described only a single embodiment, but included claims broadly drafted to cover a variety of heater/trash disposal devices. Under Phillips, a patent specification providing only a single embodiment may well result in the scope of the claims being limited to the single embodiment described, which again results in a significant decrease in claim scope. Phillips and subsequent cases also created a number of other potential pitfalls for patent drafters. For example, comments distinguishing the invention from the prior art may limit the claims, and highlighting the importance of a non-claimed feature or the benefits of the invention can also narrow the claims. It is thus crucial for you to draft a patent such that it contains multiple embodiments and appropriately broad characterizations of the invention, while avoiding any language that could limit the invention to the particular aspects of the invention that have been described.

KSR v. Teleflex

The final new hurdle for our patent application is the standard for obviousness articulated by the Supreme Court in KSR v. Teleflex , 550 U.S. ___, 127 S. Ct. 1727 (2007). Specifically, the Court held that in order to demonstrate obviousness it was not necessary to satisfy the teaching/suggestion/motivation (TSM) test, that 'obvious to try' arguments are not precluded, and the Federal Circuit had been too rigidly constricting the use of hindsight. Taken together, these holdings have made it more difficult for patent owners to demonstrate that their invention is non-obvious, both during prosecution and later during possible litigation.

The full impact of KSR on patent drafting has not yet been completely evaluated. However, in the wake of KSR it appears likely that it is more important for a patent drafter to describe the advantages of the invention in the application itself, rather than rely on arguments during prosecution as to why prior art documents should not be combined. Advantages of the invention, in particular unexpected results, are a powerful means for rebutting an assertion of obviousness. However, as described in In re Davies 475 F.2d 667 (C.C.P.A. 1973) and other cases, support for the unexpected results should be included in the specification. Evidence of undisclosed advantages is otherwise accepted only if it would 'inherently flow' from what was disclosed. Id. at 670.

As noted above, the advantages of the combination office heater/trash disposal device were not described in our hypothetical application because none were provided in the disclosure. In addition, since data demonstrating effectiveness was also not provided, it will be difficult to provide that data during prosecution to demonstrate advantages of the invention unless they inherently flows from what was provided. Accordingly, if the claims of the patent are found to be obvious in view of office heaters and trash disposal devices ' a rejection that is easier to sustain subsequent to KSR ' it will now be difficult to rebut this assertion of obviousness. It is thus more likely under KSR that our hypothetical patent application will never issue as a patent, or may later be found to be invalid for reason of obviousness if it does.

How Not to Draft an Application

This hypothetical thus provides several examples of how not to draft a patent application. For example, you should not:

• draft a patent application without a thorough review of the prior art;
• draft a patent application that includes only a single embodiment of the invention; or
• draft a patent application that does not describe or provide data supporting advantages of the invention as a whole.

A patent drafted without a thorough review of the prior art will likely result in the need to amend the claims, which will reduce the effective scope of the claims under Festo. A patent drafted that includes only a single embodiment may result in claims that are interpreted to encompass only the embodiment provided under Phillips. Finally, a patent that does not describe or provide data supporting the advantages of the invention may well be found to be obvious under the definition of obviousness provided by KSR. It is thus more important than ever to educate your clients regarding the information needed to prepare a proper patent application, and to thoroughly discuss the scope and advantages of the invention before putting pen to paper.