Since the first-inventor-to-file and Post-Grant Review (PGR) provisions of the America Invents Act (AIA) went into effect on September 16, 2012, it has become increasingly clear to patent practitioners that drafting high-quality, well-tailored patent applications is more important today than ever before. Patent prosecution tactics primarily focused on satisfying the specific requirements of a particular patent examiner may no longer be sufficient. Applicants need to draft their patent applications in such a manner so as to avoid Section 112 rejection during prosecution and either avoid or withstand future PGR challenges by consistently meeting the legal requirements for patentability, including the written description and definiteness requirements of §112.
The following are five ways in which patent practitioners can leverage the power of patent analytics to better draft high-quality, well-tailored patent applications and amendments with improved efficiency while avoiding Section 112 rejection during prosecution, and simultaneously strengthening the resultant patent to help withstand against aggressive third party scrutiny and survive §112 related challenges during PGR.
1. Avoid using relative and exemplary terminology which may render the claims indefinite.
Under §112, the claims must particularly point out and distinctly claim the subject matter which the Applicant regards as the invention. The terms used to define the claimed invention must be clear and concise, whereby the scope of the claimed invention can be ascertained by a person having ordinary skill in the art when read in light of the specification.
While the use of relative and exemplary terminology does not automatically render the claim indefinite, such claim language may be construed as being vague and indefinite if a skilled artisan would not be reasonably apprised of the metes and bounds of the claimed subject matter in view of the intrinsic evidence, including the claim language, specification and prosecution history.
Examples of relative terminology that may render the claims vague and indefinite include terms of degree when the specification fails to provide some standard for measuring that degree (e.g., “relatively large”), terms of magnitude or approximation (e.g., “about,” “similar,” “type”) and subjective terms (e.g., “aesthetically pleasing”). Examples of exemplary terminology that may render the claims vague and indefinite include “such as” and “for example.”
Patent practitioners can avoid using relative and exemplary terminology which may render the claims indefinite by leveraging the power of patent analytics during patent preparation and prosecution to pinpoint and notify them of such potentially problematic claim language and remove the same prior to filing the patent application or amendment.
2. Ensure that claim terms have proper antecedent basis in the claims and specification.
A claim term may be construed as being vague and indefinite when the meaning thereof is unclear to a skilled artisan. A lack of clarity could arise when the meaning of a claim term is unclear for failure to provide proper antecedent basis in the claims and specification.
For example, when a claim refers to “the rod” or “said rod,” but the claim does not contain an earlier recitation of “a rod” and where it would be unclear to a skilled artisan as to what particular claim element the limitation was referencing, such a lack of antecedent basis may render the scope of the claim indeterminate.
Instances of ambiguous antecedent basis may also render the claims vague and indefinite. For example, if two different rods (e.g., “a piston rod” and “a control rod”) are recited earlier in the claim, the subsequent recitation of “the rod” or “said rod” in the same claim or a dependent claim would be unclear to a skilled artisan as to which of the two different rods “the rod” or “said rod” was referencing. Furthermore, if “a rod” is recited earlier in the claim, the subsequent recitation of “the titanium rod” or “said titanium rod” in the same claim would render the claim vague and indefinite.
A claim term that lacks proper antecedent basis in the specification may also be construed as being vague and indefinite if the meaning of the claim term is unclear and the scope of the claimed invention cannot be reasonably ascertained by a skilled artisan.
The lack of proper antecedent basis in the claims and specifications of patent applications and amendments is one of the most common drafting errors encountered by patent examiners. By leveraging the power of patent analytics during patent application preparation and prosecution, patent practitioners can ensure that claim terms have proper antecedent basis in the claims and specification and thus avoid unnecessary Section 112 rejection.
3. Be aware of claim term meanings which may adversely impact claim breadth and scope.
Patent practitioners should avoid using claim terms that may unduly limit claim breadth and scope (e.g., absolutely, critical, crucial, important, key, necessarily, rarely, significant, special, superior, vital).
When drafting patent applications, it is imperative that patent practitioners are cognizant of the ordinary and customary meaning attributed to the claim terms by those of ordinary skill in the art. This is particularly the case when the specification does not explicitly set forth special definitions of claim terms expressing a clear intent to deviate from the ordinary and customary meaning attributed thereto.
In the absence of an express intent in the intrinsic evidence (e.g., claims, specification, drawings, prosecution history) to deviate from the ordinary and customary meaning attributed to the claim terms by those of ordinary skill in the art, extrinsic evidence that is consistent with the intrinsic evidence may be referred to when construing the ordinary and customary meaning of the claim terms which may adversely impact claim breadth and scope.
Examples of extrinsic evidence that may be referred to when construing the ordinary and customary meaning of the claim terms include: (1) prior usage of the claim terms by skilled artisans in the claims of prior art patents and published patent applications; (2) patent case law and administrative rulings (e.g., Markman hearings, PTAB and BPAI decisions) where the court’s language in the opinion construed the meaning of the claim terms, as well as claim term meanings presented by the litigants (e.g., inventor testimony and expert testimony); (3) learned treatises (e.g., Chisum on Patents, Matthew Bender® Attorney’s Dictionary of Patent Claims Treatise); (4) technical thesauri for broader, narrower, and related alternative terminology (e.g., Elsevier’s Compendex Engineering Thesaurus, LexisNexis® Proprietary Patent Thesaurus); (5) trade publications (e.g., Elsevier’s scientific, technical, and medical information); and (6) dictionary definitions.
4. Ensure the specification describes the structure that performs the recited function.
A means- (or step-) plus-function claim limitation is construed to cover the corresponding structure, material, or acts described in the specification, and equivalents thereof, for achieving the claimed function. While functional claim language does not automatically render the claim improper, if the specification fails to adequately disclose sufficient corresponding structure, materials or acts that perform the claimed function, then the claim may be construed as lacking sufficient written description and being indefinite for failing to particularly point out and distinctly claim that which the Applicant regards as the invention. Therefore, when drafting a patent application, the patent practitioner must adequately disclose in the specification the corresponding structure, materials or acts of a “means” or “step” claim limitation in a manner sufficient that a skilled artisan would understand what structure, materials or acts will accomplish the recited function.
5. Avoid and survive §112 related challenges during PGR.
As of May 31, 2017, a cumulative total of 6,961 AIA petitions had been filed with the Patent Trial and Appeal Board (PTAB).1 Much to the dismay of patent holders and investors alike, “the PTAB invalidates at least one claim in over 95% of the patents that it reviews,” despite the fact that these patents have already gone through a “rigorous, lengthy and expensive examination process.”2
PGR under the AIA enables interested third party challengers to immediately file a petition with the PTAB to attack granted patents within nine months after grant or reissue by asserting any grounds for invalidity.3,4,5 Patents eligible for PGR are those issuing from patent applications having an effective filing date on or after March 16, 2013.6
Examples of the various grounds of invalidity that may be asserted during PGR include §112 deficiencies pertaining to a lack of sufficient written description, indefiniteness, and claims directed to a means or step for performing a specified function without the recital of corresponding structure, material, or acts in the specification that achieve the claimed function.4 Accordingly, strict adherence to §112 is one of the most vital ways to ensure a granted patent’s long term success.
PGR is an early threat to patent holders as it offers a number of advantages over civil litigation when challenging the validity of a patent. In contrast to the more stringent “clear and convincing” evidentiary standard applied by the Federal Courts in patent infringement cases, PGR applies a lower “preponderance of the evidence” standard requiring the petitioner to “demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable.”7,8 In addition to having a less stringent evidentiary standard, PGR is also less expensive and faster than civil litigation, with pendency before the PTAB after institution normally being no more than one year.6
A patent holder has limited room to maneuver during PGR. In the absence of a PTAB order specifying otherwise, a patent owner may file one motion to amend a patent to cancel a challenged claim or propose a reasonable number of substitute claims within three months from the date the PGR is instituted.9 Any additional motion to amend may not be filed without PTAB authorization upon a showing of good cause or a joint request of the petitioner and the patent owner to materially advance settlement.10 Furthermore, a motion to amend claims must include a claim listing clearly showing the changes and support in the original disclosure for each claim that is added or amended.11 Moreover, the patent owner is not permitted to enlarge the scope of the patent claims, introduce new matter, or submit any additional information outside the original and earlier-filed disclosure to support the claim amendments.11,12
Given the less friendly post-grant environment, Applicants need to draft their patent applications in such a manner so as to avoid Section 112 rejection during prosecution, and either avoid or withstand future PGR challenges, by consistently meeting the legal requirements for patentability, including the written description and definiteness requirements of §112.
By leveraging the power of patent analytics offered through LexisNexis PatentOptimizer® during patent preparation and prosecution, patent practitioners are obtaining more favorable outcomes for their clients by avoiding Section 112 rejection, facilitating compact prosecution, streamlining the patent prosecution process, reducing patent prosecution costs, decreasing pendency times, avoiding prosecution history estoppel and simultaneously strengthening resultant patents to help withstand against aggressive third-party scrutiny and survive post-grant §112 challenges during PGR under the AIA.
1 USPTO, “PTAB Statistics,” May 31, 2017 (https://www.uspto.gov/patents-application-process/appealing-patent-decisions/statistics/aia-trial-statistics).
2 IPWatchdog.com, “Cash strapped USPTO, failed fee increase and political shenanigans” by Paul Morinville, February 26, 2017 (https://www.ipwatchdog.com/2017/02/26/uspto-failed-fee-increase-political-shenanigans/id=78760/).
3 35 U.S.C. §282(b)(2) and (b)(3)(A).
4 37 CFR §§42.202(a), 42.204(b)(2) and (b)(3).
5 USPTO, “Major Differences between IPR, PGR, and CBM,” (www.uspto.gov/sites/default/files/ip/boards/bpai/aia_trial_comparison_chart.pptx).
6 37 CFR §42.200(c).
7 Microsoft Corp. v. i4i Limited Partnership, 564 U.S. 91, 131 S. Ct. 2238, No. 10-290 (June 9, 2011) (unanimous U.S. Supreme Court decision holding that 35 U.S.C. § 282 establishes a presumption of patent validity that an alleged patent infringer must overcome by clear and convincing evidence).
8 37 CFR §42.208(c).
9 37 CFR §§42.220(1)(b) and 42.221(a)(1) and (a)(3).
10 37 CFR §42.221(c).
11 37 CFR §42.221(b)(1) and (b)(2).
12 37 CFR §42.221(a)(2)(i) and (a)(2)(ii).