Bob Brill patent IP lawyer with business sense | Brill IP Law Office

You may appreciate a practical pointer on the preparation of patent applications. Even during the initial patent drafting, a downstream consideration is subsequent understanding or ambiguity concerning the patent claims, such as during potential enforcement of the patent.

Benefits result from the disclosure of your patent application serving to explain well your invention in plain and understandable words for the meaning the readers of your patent will grasp.

Further below, this post indicates how the above pointer may advantageously fit with the following excerpt (slip op. at 11-12) from the recent Supreme Court decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. ___ (2015):

As all parties agree, when the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history), the judge’s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo.

In some cases, however, the district court will need to look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art during the relevant time period.

For example, if a district court resolves a dispute between experts and makes a factual finding that, in general, a certain term of art had a particular meaning to a person of ordinary skill in the art at the time of the invention, the district court must then conduct a legal analysis: whether a skilled artisan would ascribe that same meaning to that term in the context of the specific patent claim under review.

So, by supplying understandable technical explanation of your invention as intrinsic evidence within your patent application, your disclosure may advantageously:

  • Drive the direction of coverage by your patented invention.
  • Reduce a perceived need for external opinions on your patent’s coverage, as extrinsic evidence offered by hired technical experts.

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