In the two years since key provisions of the America Invents Act went into effect, it has become clear to patent professionals that drafting an ironclad patent application is more important today than ever before.
For both patent applications and granted patents, strict adherence to Section 112 of the U.S. Patent Act–the specification that enables the patent’s claims–is arguably the most vital way to ensure a patent’s long term success.
Patents previously could be challenged through civil litigation, but the introduction in September 2012 of post-grant review and inter partes review exposed awarded patents to additional potential challenges. Patent prosecution tactics that once might have focused on satisfying the requirements of a particular patent examiner and securing allowances are no longer sufficient. From the outset, applicants now need to draft their patent applications to withstand aggressive third-party scrutiny.
With that in mind, here are five important ways to minimize an application’s risk of Section 112 rejection–which also will strengthen the resulting patent against third-party scrutiny if targeted for post-grant review.
1: Avoid non-specific language.
No matter what a patent application describes or claims, its language should always be as specific as possible.
The disclosure of an invention should be specific enough that a person of ordinary skill in the pertinent field or art could, in theory, use its description to create it from scratch, assuming access to the required tools and materials.
Avoid wiggle words or words of magnitude such as “substantially,” “relatively,” “conventional,” “higher,” “lower” and so forth. When writing the disclosure of an invention, if a quality can be measured, measure it and describe the measurement in the specification.
2: If it’s in a claim, make sure it has an antecedent basis.
Ensure that each part of the invention that appears in the set of claims already has been introduced and fully described in the disclosure section of the application. That initial description provides an antecedent basis for the claim’s reference to the same part of the invention.
If a claim refers to “the metal rod,” but a description of “a metal rod” is missing from the disclosure, the claim lacks an antecedent basis.
The lack of antecedent basis is one of the most common objections filed by patent examiners. Though patent applicants typically will have the opportunity to correct the oversight and resubmit the application, the resulting delay can and should be avoided through more careful drafting.
3: Be aware of any comparable prior art.
A strong understanding not only of the claimed invention but of any significant prior art to which a patent examiner might reasonably compare the invention will make it easier to draft a successful application that requires fewer amendments.
An applicant who is familiar with the disclosures and claims of any applicable prior art will be better equipped to avoid vague and indefinite language and to draft claims targeted precisely at the unique attributes of the new invention. A thorough prior art search is crucial.
4: Be very detailed in articulating any “means plus function” claims in an application.
If a patent application includes a claim on “a means for” accomplishing a particular function, the underlying implementation of that “means” needs to be very precisely spelled out in the disclosure.
For example, a claim to “a means for locking and unlocking a door without the use of a physical key” might be allowed, but only as a shortened reference to a specific invention detailed in the disclosure. It would not give the prospective patent holder IP rights to every badge reader, thumbprint reader, and keyless entry system in existence.
It is the description of what comprises the “means” and how the means accomplishes the function in question that will determine what the patent’s claim would actually cover, if allowed. If that description is not precise enough, the patent examiner is likely to reject the claim as indefinite under Section 112.
5: Make sure your specification will survive not just examination, but post-grant review.
A successful patent application’s specification doesn’t need to satisfy only a USPTO patent examiner.
With the advent of post-grant review, any third party has nine months following a final allowance to file a post-grant review petition to have one or more of a patent’s claims invalidated. Section 112 is one of the areas which a petitioner can use as grounds to challenge a patent, and the petitioner only need produce “a preponderance of the evidence” that a claim is unpatentable.
A patent holder has limited room to maneuver during post-grant review. Unless the petitioner cooperates with the patent holder, the patent holder’s response to claims of invalidity are essentially restricted to rescinding the challenged claim(s) or substituting new claims for the old ones. In particular, the patent holder is not permitted to submit any additional subject matter to support the claims. The time for that is during the patent prosecution process, which is why the Section 112 portion of the initial application is so crucial.