Courts Want Less Drafting, More Crafting In Patent Apps

Transcription

1 Portfolio Media. Inc. 860 Broadway, 6th Floor New York, NY Phone: Fax: Courts Want Less Drafting, More Crafting In Patent Apps Law360, New York (March 05, 2014, 7:11 PM ET) -- The life of a patent solicitor has always been a hard one observed Judge Giles Rich in the 1960s.[1] And at no time has that seemed more true than today, as heightened interest at the U.S. Supreme Court, conflicting views within the Federal Circuit, and assertive steps at the U.S. Patent and Trademark Office combine in a perfect storm for patent applicants. At the Supreme Court, the standard for nonobviousness seemed heightened by KSR in 2007,[2] and patent-eligible subject matter seemed progressively narrowed through the recent decisions in Bilski v. Kappos,[3] Mayo v. Prometheus[4] and AMP v. Myriad.[5] At the Federal Circuit, those claims that remain nonobvious and patent-eligible seem construed in an increasingly narrow manner. For example, in Retractable Technologies, the word body in an independent claim was construed to mean one piece body, in spite of the presence of a dependent claim that further recited one piece body, to keep the claims tethered to the specification.[6] At the USPTO, in painful contrast, the claims of pending applications seem construed so broadly that attaining patentability is an increasing challenge. For example, in Ex parte Agapi, the phrase computerimplemented system in a claim was considered to reasonably read on a group of humans working together, thus rendering the claim patent ineligible.[7] A closer look at some of these decisions is even more worrisome. Some have seen a snub of the patent draftsman s art by Justice Stephen Breyer in Prometheus.[8] And the criticism delivered by Judge S. Jay Plager in his concurring decision in Retractable Technologies is stinging: However much desired by the claim drafters, who want claims that serve as business weapons and litigation threats, the claims cannot go beyond the actual invention. I have written elsewhere about the curse of indefinite and ambiguous claims, divorced from the written description, that we regularly are asked to construe, and the need for more stringent rules to control the curse. In these decisions, the status of patent solicitors seems to have fallen far since the early 1960s, when the Supreme Court credited (for at least a second time) the drafting of patent specifications and claims as among the most difficult legal writing tasks,[9] or even since the mid-1990s, when Judge Plager (so critical of claim drafters more recently) himself acknowledged claim drafting to be an art on which the entire patent system today depends. [10] Given the criticism of the patents before them in the recent past, and the inevitability that new patents will continue to be placed before them in the future, the invitation of the courts is clear: They want to

2 see more craftsmanship embodied in the patents they are asked to review.[11] Fortunately for the stakeholder who is in the process of pursuing (or evaluating) patents in the present be he or she inventor, manager, executive or investor the elements of craftsmanship in patent preparation are readily identifiable: Like the 4 Cs assessed when purchasing a diamond (cut, color, clarity and carat weight), the 4 Cs that indicate craftsmanship in patent preparation can be summarized as collaboration, customization, continuity, and core components. Collaboration The basic collaboration in preparing a patent application (or a series of related patent applications) is widely understood as between inventor(s) and the patent counsel writing the application. But valuable collaboration is often much broader than this limited partnership. For example, marketing or product development professionals may contribute to the process, adding perspective on how the invention(s) may be commercially implemented. Technical librarian or search professionals may be part of the team, helping to ensure that patent applications are drafted with knowledge of the most noteworthy prior art (an omission often difficult to rectify after filing). Manufacturing specialists may advise on the feasibility of particular approaches or embodiments. In addition, foreign counsel may be brought into the fold sooner rather than later, adding perspective on patent eligible subject matter in their jurisdictions, where patent eligibility requirements may be more favorable, or at least more predictable, than in the United States, and the United States application will serve as a priority document for their jurisdictions later. Finally, both counsel and inventors may have mentors that add additional depth as well. The presence or absence of this type of meaningful collaboration can readily be seen. Customization For the individual patent application, customization involves an iterative, back-and-forth conversation and exchange of drafts among all collaborators. Again, the presence or absence of this type of customization can be determined by modest inquiry. However, the concept of customization is broader than this: It may also involve control of the focus, content and theme of a particular application, and decisions about how much should or should not be consolidated into a single case. An example may be Saffran v. Johnson & Johnson,[12] where a $500 million trial court judgment over an accused vascular stent was lost due to an adverse claim construction on appeal. The claims at issue, however, sought to cover both a vascular stent and a bone fracture treatment. In hindsight, drafting the claims and specification to cover both in a single case may have been too far a reach, and Saffran may have been better served by separate filings that focused the claims more specifically on each. Moreover, at the company level, the entire patent program should be customized to that company s particular business. For example, a strategy that relies upon deferring patent filing until a product has more fully matured may be entirely appropriate for a pharmaceutical company seeking to develop a therapeutic agent to a new drug target where the product is many years from regulatory approval, but may be completely misplaced for a device company that is developing apparatus that is months or weeks away from a first public disclosure. Again, the extent to which a company has developed a patent program that is customized to its business can be readily determined.

3 Continuity A fallacy of some efforts to commoditize or make fungible the preparation and filing of patent applications is that inventions are discrete events that can neatly be packaged into individual patents that stand cleanly and distinctly from any other. Those with any familiarity with the process know that this is seldom the case: The scope of protection desired by patenting evolves as products and processes develop, both before and after commercialization. Balancing when and how often to file patent applications, and what their content and focus should be, in the face of changing markets and competition, more insights gained during further development, the oft-times competing requirements of different sections of the patent statute, and the most recent feedback on previous filings as they are examined in the USPTO and abroad, is a perennial challenge. The more stable the collaborative group noted above over time, the better an organization is situated to respond to these many and dynamic variables. Stability or continuity like this can readily be determined by modest inquiry. Core Components and a Note on Creativity Many of the core components of a craftsmanlike patenting effort have been noted above, notably the incorporation of prior art search expertise and the establishment of a patent program within an organization that fosters continuity and collaboration. On the patent counsel s side, a core component is achieving mastery of the seemingly peculiar technical style of drafting claims, usually acquired after substantial mentoring by an experienced practitioner. While the courts are clearly looking for more than draftsmanship alone in the patent placed before them, sound draftsmanship is a condition precedent to craftsmanship. And as Charles Black observed of the legal profession more generally: It is visibly true of law that a really high technical proficiency liberates instead of binds and this is one of the surest diagnostic signs of art. [13] A final element (a fifth C word) that bears mention is creativity. While a valuable component of any patenting effort be it the individual patent or the overall patent program this ingredient is more intangible and hence more difficult to assess. But the core components noted above are an essential foundation for any efforts at creativity, and the presence or absence of these core components can be readily determined. None of the foregoing principles are new: They are developed more fully in older (but still valid) works such as Judge Arthur Smith s classic Pitfalls in Patent Prosecution [14] and George Woodling s Inventions and their Protection, [15] as well as in more recent works such as Gunnar Wieboldt s How Much Value is Your Company Losing? Implementing Effective Intellectual Property Management, [16] Ronald Slusky s Invention Analysis and Claiming: A Patent Lawyer s Guide, [17] and others. Dwight D. Eisenhower was fond of saying: All generalizations are false, including this one. [18] Some of the general statements about the indicia of craftsmanship above are likely overly broad as well. Still, whatever form craftsmanship may take in a specific set of circumstances, the decisions and statements of the Supreme Court and the Federal Circuit are clear: Patent drafting is an art, and craftsmanlike rendering of this art is what the courts want to see. By Kenneth D. Sibley, Myers Bigel Sibley & Sajovec PA Kenneth Sibley is a shareholder in Myers Bigel's Raleigh, N.C., office.

4 The opinions expressed are those of the author(s) and do not necessarily reflect the views of the firm, its clients, or Portfolio Media Inc., or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice. [1] In re Ruschig, 379 F.2d 990, 993 (C.C.P.A. 1967). [2] KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). [3] Bilski v. Kappos, 561 US (2010). [4] Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 US (2012). [5] Association for Molecular Pathology v. Myriad Genetics, Inc., U.S., Slip op. No (Decided June 13, 2013). [6] Retractable Technologies v. Becton, Dickinson & Co., 653 F.2d 1296 (Fed. Cir. 2011). [7] Ex parte Agapi, (P.T.A.B. Nov. 14, 2013). [8] Our conclusion rests upon an examination of the particular claims before us in light of the Court s precedents. Those cases warn us against interpreting patent statutes in ways that make patent eligibility depend simply on the draftsman s art without reference to the principles underlying the prohibition against patents for [natural laws]. (citing Parker v. Flook). [9] The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy. Topliff v. Topliff, 145 U.S. 156, 171 (1892) (cited with approval in Sperry v. Florida, 373 U.S. 379, 383 (1963). [10]Exxon v. Lubrizol, 64 F.3d 1553, 35 USPQ2d 1801 (Fed.Cir.1995), cert. denied, 518 U.S (1996) ( Claim drafting is itself an art, an art on which the entire patent system today depends. The language through which claims are expressed is not a nose of wax to be pushed and shoved into a form that pleases and that produces a particular result a court may desire. The public generally, and in particular, the patentee's competitors, are entitled to clear and specific notice of what the inventor claims as his invention. That is not an easy assignment for those who draft claims, but the law requires it, and our duty demands that we enforce the requirement. There is no room in patent claim interpretation for the equivalent of the cy pres doctrine; that would leave the claiming process too indefinite to serve the purposes which lie at the heart of the patent system. )(Plager, J. concurring). [11] This invitation can also be seen in Justice Thomas s conclusion of AMP v. Myriad with repeated statements of what the Court had not decided. [12] (Fed. Cir. April 4, 2013). [13] Charles L. Black, Law as an Art, reprinted in The Humane Imagination (Ox Bow Press 1986). [14]41 J. Pat. Off. Soc y 5 (1959). [15] (2d ed. 1954).

5 [16]1 International In-House Counsel Journal 431 (2008). [17] (2d Ed. 2013). [18] See, e.g., Dwight D. Eisenhower, The President s News Conference (August 11, 1954) All Content , Portfolio Media, Inc.