Patent drafting strategies in complex technical areas can be "field-specific." Despite the efforts of the U.S. Patent and Trademark Office to apply generic standards, claim language that is acceptable in one field might inadvertently lead to difficulties in establishing patentability in another. Since high-tech subject matter is complex and often crosses over into multiple technical areas, claiming strategies that are likely to enhance favorable prosecution need to be carefully developed. This article presents some of the important points to consider when writing a high-technology patent application, with particular emphasis on claim drafting.
Not many people would dispute the fact that the value of any technology company resides primarily in the ability to obtain and defend its intellectual property. In many evolving high-tech fields such as nanotechnology, the standards for prosecution and enforcement are evolving slower than the technology itself. This creates an education gap in the patent office and the legal community, which are striving to keep up with these fields and establish better ways to prosecute patent applications in a consistent and timely manner.
Since all inventions must be described in patent claims, the complexity of multifield inventions has given rise to some new issues regarding claiming strategies. This article presents a review of some important issues to consider when drafting claims for these inventions.
Overdisclosing and underclaiming
The natural inclination is to include every possible permutation, use or perspective advantage that a new technology may have in the future, even if there is no concrete proof or even a conceptual understanding about the nature of such a futuristic application. If these perspective applications are not fully supported in the initially filed application -- and more times than not, they are not supported sufficiently to enable claims directed to these prospective applications -- patentees can end up being "their own worst prior art" once further development takes place to actually reduce the claimed inventions to practice. Therefore, patentees should avoid the temptation to include subject matter unnecessary to support the claimed invention, or sufficiently developed to provide an enabling disclosure for later-filed claims.
If a patentee plans on seeking European patent protection (or, for that matter, protection anywhere outside the United States), he must be careful to build support into the initial U.S. filing, even if it is a provisional application. The patentee must include the information necessary to support the explicit disclosure requirement in the United Kingdom (and elsewhere) or the right to claim priority will be lost, or even the ability to take a "fall back" position to overcome a rejection based on a prior art reference. Perhaps the most fatal flaw in meeting this heightened requirement is when claims are directed toward a combination of individual elements. If each contemplated combination is not specifically disclosed in the specification, it will not be possible to combine these individual elements in a claim constructed from "laundry lists" of individual elements included in your specification. In the United States, the analogy used to be if you have a "C" on one page, an "A" on another page and a "T" on another page, you could claim a "CAT." However, even in the United States, the written description requirements are not quite so liberal as they used to be, so efforts should be taken to consider this issue when preparing the patent specification to be initially.
Include problem-solution language
In keeping with international standards, it is important to clearly articulate the problem-solution theory in the specification to anticipate international scrutiny. From another perspective, it is always a good idea to "tell a story" in a patent application. It helps to hold the attention of the reviewer, and can be used to point out that the invention presents a solution to a problem that has some humanitarian appeal.
By way of example, one of the problems encountered in the diagnostic industry is assay sensitivity. Many attempts have been made to improve sensitivity by amplifying target or enhancing signal. Such approaches, however, have still not provided for a "single molecule detection" level of sensitivity. Many nanotechnology researches indicate this problem is solved in a different way by taking advantage of the unique physical (e.g., resonance, optics) properties of nanoscale detection systems. Such a problem-solution story should be included in the specification.
File claims with first-filed applications
Whether an applicant files first in the United States or elsewhere, she should always define the invention as a "claim" in the initial filing, even if it is a U.S. provisional application. Drafting claims should be one of the first things an applicant does when drafting the application. The claims serve as a "checklist" for adequacy of the disclosure, and are the best way to communicate to the examiner what the invention is. Also, once claims are drafted, they should be converted into narrative form and included in the body of the specification. While claims themselves provide written description support in the United States, they do not in other countries. Accordingly, narrating claims and repeating them in the specification, usually in the Summary of the Invention section, can potentially avoid a rejection based on inadequacy of the description in another country.
Use well-defined technical words
In many cases, patentees have used different terminology to describe similar technology inventions. A patentee can define the terminology used in the claims of the patent application. Nevertheless, applicants should generally avoid unnecessarily making up words to refer to components or elements that can just as easily be referred to using recognized terminology. Using terminology that is not well-defined or commonly used will only complicate the examiner's searching and may even lead to more art to overcome than if standard wording had been used in the first place.
Include all types of claims
If the invention is a unique apparatus, then the applicant may want to claim the apparatus, method of using the apparatus, process for making the apparatus, business method for processing information obtained from the apparatus, kits including the apparatus, etc. However, as discussed above, caution must still be taken to avoid claiming aspects of the invention that are not adequately supported in the specification. Also, by doing this, the applicant may not be able to avoid a "restriction requirement," which requires the applicant to limit a case to a single claimed invention, and to cancel all remaining claims that can still be prosecuted in separately filed applications. If, however, the applicant relates all of the claim types back to the same apparatus, even though the claims may still be restricted in the United States, "unity of invention problems," which are similar to restriction practice but not so stringent, can usually be avoided outside the country. Even if an application is subject to a restriction requirement, remember to consider the process of joinder once initially prosecuted claims are allowed. This permits the applicant to reinstate canceled claims if generic claims encompassing the canceled claims are found to be allowable.
When to use an interdisciplinary approach to drafting
Many high-tech inventions are interdisciplinary and involve the convergence of fields like chemistry, computer science, materials science, mechanical engineering, electrical engineering and biotechnology. It is not possible to draft a truly interdisciplinary patent application unless the right team of people -- who are well-versed in the sciences to which the invention relates -- are drafting the application.
For example, point-of-care diagnostic devices often involve a convergence of optics, biologics, mechanics and electronics. The development of these devices requires the concerted efforts of a diverse development team. Drafting patent applications covering these types of complex interdisciplinary inventions requires input from patent professionals with the same level of diversity. In such instances, a team approach to the drafting process is useful. This doesn't necessarily mean five patent lawyers are needed to draft every interdisciplinary patent application, but a "team" consisting of inventors and their technical colleagues working together with one or more attorneys or agents will usually provide the best work product.
Claiming strategies for evolving multi-field, high-tech inventions need to be carefully developed to facilitate prosecution, and should be adequately defined at the time the first patent specification is finalized and filed.
Axford is a partner in the San Diego office of Gordon & Rees LLP, and leads the firm's Intellectual Property Prosecution Group.