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Patent Drafting: Disparities Between Japanese and U.S. Practice in a Global Patent World Where Parallel Filings Are Sought

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Patent Drafting: Disparities Between Japanese and U.S. Practice in a Global Patent World Where Parallel Filings Are Sought Patent Drafting: Disparities between Japanese and U.S. Practice In a global patent world where parallel filings are sought for innovations in patent offices around the world, it continues to be a goal that one can draft a single patent disclosure as basis for global protection. The goal remains elusive for a variety of issues, including questions as to whether the specification should include “problems” and “solutions” relating to the invention. Japan Patent Office Guidance: Recently, the Japan Patent Office has published guidance which demonstrates the ongoing nature of this problem. See EXAMINATION GUIDELINES FOR PATENT AND UTILITY MODEL IN JAPAN (Provisional Translation)(Japan Patent Office Sept. 2015). Disparities between U.S. and Japanese Practice: The writer’s monograph, PATENT DRAFTING, has been updated to deal with the new Japanese guidance from its EXAMINATION GUIDELINES… See PATENT DRAFTING, §8[b][2], Japanese Requirement to State “Problem” and “Solution” (pp. 178-80); see also id., § 6[c][5], “Problems”, “Objects” and “Advantages” for Japan Priority, (pp. 145-49). A copy of the latest version of PATENT DRAFTING is attached. Regards, Hal PATENT DRAFTING Crafting a first priority filing in a first-to-file world HAROLD C. WEGNER Case Law Last Updated September 5, 2015 PatentDraftingSeptember20.pdf © MMXV Harold C. Wegner Wegner, PATENT DRAFTING (2015) This book is a privately circulated pre-publication version for comments prior to a final revision and publication planned for 2016. Please send comments to [email protected] Prepublication edition for comment only 2 Wegner, PATENT DRAFTING (2015) SUMMARY OF CONTENTS Preface 4 Detailed Table of Contents 11 Part (I): Business Approach to Patent Draftsmanship 23 Part (II): Drafting the Application 155 Part (III): The Claims, the Central Focus 219 Part (IV): Specification to Support the Claims 399 Index 449 About the Author 473 Prepublication edition for comment only 3 Wegner, PATENT DRAFTING (2015) PREFACE This book takes a front end view of the patent process: The vantage point is the preparation for the very first filing, which usually will be either a domestic provisional or an overseas Paris Convention application. This first filing, accomplished “today”, will serve as a priority base for a second filing a year later as a regular (non-provisional) application. That second filing will be examined “tomorrow”, perhaps in 2018 or later under a new Administration. Many changes may take place between “today” and “tomorrow”, both in terms of the trend of the case law as well as examination policies of a new Under Secretary of Commerce. The biggest possible change could occur in the area of patent-eligibility under 35 USC § 101 based upon the view of the new Administration toward patents. Thus, the focus of the drafting process in changing areas is to provide a specification that has flexibility to introduce new claim forms “tomorrow” that will find support in the filing “today”. See § 1[b][7], New Approach in a New Administration in 2017 (discussing options open under a more patent-friendly Under Secretary of Commerce). A Three-Fold Approach to Patent Drafting Three critical features are focal points: First, the patent drafting framework, here, is that of a first, priority application in a first-to-file world; second, a business approach is taken to the drafting process which determines whether the exercise process takes one hour or hundreds of hours; and third, a holistic, simple application is the goal, to present a patent document easy to understand for both an examiner and the courts, one that optimizes protection and minimizes technical pitfalls. Prepublication edition for comment only 4 Wegner, PATENT DRAFTING (2015) (1) The First, Priority Application in a First-to-File World This book is about drafting the first priority application for a first-to-file world “today” for an application that will be examined “tomorrow” under a new Administration. See § 1[b][7], New Approach in a New Administration in 2017 (discussing options open under a more patent-friendly Under Secretary of Commerce). Over fifty percent of all United States patents have at least one and often several priorities keyed to a provisional or Paris Convention overseas priority application, or are daughter continuation, continuation-in-part or divisional applications. A time efficient drafting of the priority application is vitally important when facing the realities of a first-to-file patent regime where the grace period can never be part of a prospective drafting strategy. It does no good to file a “perfect” application with all the bells and whistles suggested by the Manual of Patent Examining Procedure when that application is filed the day after a junior inventor has filed a focused application keyed to the essential statutory elements necessary for a solid patent: The race to the Patent Office must be won; there is no silver medal for coming in second. Or, where an invention is presented at a scientific conference with the idea that an application would be filed in the near future under the “grace period” when a member of the audience makes a prior art divulgation of a variant of the invention that is outside the scope of the grace period. Prepublication edition for comment only 5 Wegner, PATENT DRAFTING (2015) (2) A Business Manager’s Perspective of the Drafting Process Priority patent drafting is approached through the lens of a business manager without which the filing process makes no sense. Management needs to take a hands on approach to directing the drafting effort. The entire effort may take a matter of an hour or so or up to several hundred hours, depending upon the technology and the state of the innovation: Once given a complete technical description and drawings for the preferred embodiment, the business objectives for many filings may call for spending no more than an hour or so for an already completed invention filed for defensive purposes. (The harm in spending several hundred unnecessary hours on an application goes beyond the expense of drafting the application but may be fatal to all patent rights if the extra expenditure of time means that a true first inventor is second-to-file in a first-to-file world.) At the other end of the spectrum where an upstream prototype in an unpredictable technology has been visualized but the ultimate commercial embodiment is yet to be created, the drafting process may take hundreds of hours to provide working and prophetic exemplary support to complement broad generic claims. (3) A Simple, Holistic Approach to Patent Drafting An overarching goal is the presentation of a holistic document that is simple, an easy to understand application and one that is easy to examine. The patent applicant may present twenty or fifty or sixty claims in an application as a matter of right. The patent applicant may cite seventy or eighty prior art citations to meet his duty of disclosure. The patent applicant may present a detailed Background of the Invention reciting a multitude of problems faced by the inventor which he has overcome through his new invention. This approach while open as a matter of right to any inventor is at the same time a prescription for failure, a road to a Prepublication edition for comment only 6 Wegner, PATENT DRAFTING (2015) protracted prosecution where the examiner is choked in a sea of too much information to digest within the limited time available for examination of each application. Instead, each claim should be tied to a business objective: Many if not most applications should have five or ten or perhaps twelve or fifteen claims, and not the twenty or fifty of sixty claims. Where a prior art search has provided seventy or eighty citations, even if it is difficult to decide which one is the most pertinent, certainly a triage exercise can eliminate all but five or six prior art references as “cumulative”: Eliminating most of the chaff makes the examiner’s task much easier, which should be a goal of any presentation of a new application. “Abstract” Software and “Natural” Product § 101 Patent-Eligibility An extensive discussion is provided for how to draft a patent application where one element of the invention is an “abstract” software concept or a “natural” product. The discussion has many facets in chapters throughout the book, integrated in an introducing section § 1[b], Technology-Specific Patent-Eligibility Challenges. Above all, it must be remembered that this book is focused on how to draft a patent application “today” which will be first examined “tomorrow” under new Executive Branch leadership where there could be major changes in examination that could refocus attention on Sections 102, 103 and 112 and away from patent- eligibility issues. See § 1[b][7], New Approach in a New Administration in 2017 (discussing options open under a more patent-friendly Under Secretary of Commerce). Prepublication edition for comment only 7 Wegner, PATENT DRAFTING (2015) There is no “simple” way to deal with the patent-eligibility issues under 35 USC § 101 that plague software, pharmaceutical and biotechnology innovations. On the one hand, simple guidance on how to treat patent-eligibility issues short changes the need for a detailed exposition of the law which is clearly in a transitory state. On the other hand, a detailed exposition of the case law and how to create a test case to challenge the patent-eligibility case law is impossible reading for a person simply looking for a way to deal with the immediate realities that they do not have the ammunition for a test case. To resolve this dilemma, a short section deals with the practicalities of life where a test case is not possible. See § 1[b], Technology-Specific Patent- Eligibility Challenges.
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