美国专利申请文件撰写讲义.pptx

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1、会计学1美国专利申请文件撰写讲义美国专利申请文件撰写讲义After KSR,the Standards Continue to be TightenedUSPTO Board of Appeals200420062008AFFIRMED,AT LEAST IN PART48.7%55.8%69%REVERSED OR REMANDED45.5%40.4%28.2%第1页/共35页October 10,2007 PTO Guidelinesn nMust readMust read for any practitioner handling US prosecution for any prac

2、titioner handling US prosecutionn nIdentified seven“Rationales”supporting a legal Identified seven“Rationales”supporting a legal conclusion of obviousnessconclusion of obviousnessn nEach“Rationales”includes specific examples based on Each“Rationales”includes specific examples based on case lawcase l

3、aw第2页/共35页n nWhat attributes should a well-written patent application have?n nDescribe the invention so one of ordinary skill can Describe the invention so one of ordinary skill can understand itunderstand itn nDisclose the best modeDisclose the best moden nProvide support for subsequent amendment o

4、f Provide support for subsequent amendment of claimsclaimsn nClaims narrow enough to avoid prior artClaims narrow enough to avoid prior artn nClaims broad enough to hamper design aroundClaims broad enough to hamper design aroundThe“well-written”patent applicationThe“well-written”patent application4

5、第3页/共35页n nClaims clear enough to provide noticeClaims clear enough to provide noticen nFactually accurateFactually accuraten nSuitable vehicle for foreign filingSuitable vehicle for foreign filingn nTell a storyTell a storyThe“well-written”patent applicationThe“well-written”patent application5 第4页/

6、共35页Initial Preparationn nIt is important to have a good understanding of the It is important to have a good understanding of the most relevant prior art most relevant prior art n nDont want to amend the claims if not necessaryDont want to amend the claims if not necessary 6 第5页/共35页Reason not to am

7、end claimsnot to amend claimsn ncase law now emphasizes the negative impact that narrowing case law now emphasizes the negative impact that narrowing amendments have on the scope of a claimamendments have on the scope of a claimn n(FestoFesto)7 第6页/共35页Background Description of Related Art n nThe ba

8、ckground enables the Examiner to quickly The background enables the Examiner to quickly focus on the importance of the invention focus on the importance of the invention n nDiscuss prior art objectivelyDiscuss prior art objectivelyn nDiscuss problems,shortcomings or improvements Discuss problems,sho

9、rtcomings or improvements needed in the prior art carefullyneeded in the prior art carefullyn nBalance reluctance to prematurely characterize the Balance reluctance to prematurely characterize the invention against need for advocacyinvention against need for advocacyn nCan be Can be omittedomitted8

10、第7页/共35页Potential Problems with the“Related Art”Sectionn nIf the specification indicates that the prior art If the specification indicates that the prior art devices have a certain drawback,and if an accused devices have a certain drawback,and if an accused device similarly has that drawback,a court

11、 may device similarly has that drawback,a court may find that the accused device does not infringe the find that the accused device does not infringe the patent patent 9 第8页/共35页Summary/Objects Sectionn nAcceptable to omit“Objects”entirely n nAvoid defining an object that might be narrower in scope

12、than the invention n nUse objects,purposes,features and advantages“carefullyn nThe summary should be a mere recitation of the independent claims of the application,almost verbatim 10 第9页/共35页Brief Description Of The Drawings n nDescribe as illustrations of embodimentsn nDo not say that the drawings

13、illustrate the“invention”11 第10页/共35页Description Of The Preferred Embodiments n nBest Mode RequirementBest Mode Requirementn nMust disclose the best mode Must disclose the best mode contemplated by the inventor of contemplated by the inventor of carrying out the invention carrying out the invention

14、12 第11页/共35页Description Of The Preferred Embodiments Describe new functionality associated with the Describe new functionality associated with the invention-describe what the invention invention-describe what the invention accomplishes that the prior art does not accomplishes that the prior art does

15、 not accomplish.accomplish.n nDescribe how combination of two or more Describe how combination of two or more elements achieves new functionality or new elements achieves new functionality or new synergy.synergy.13 第12页/共35页Description Of The Preferred Embodiments n nAvoid claims that simply list el

16、ements or features of Avoid claims that simply list elements or features of invention.invention.n nDraft claims so that features/elements of invention Draft claims so that features/elements of invention are related to one another makes it more difficult for are related to one another makes it more d

17、ifficult for Examiner to argue that improvement is merely Examiner to argue that improvement is merely predictable use of prior art elements according to predictable use of prior art elements according to their established functions.their established functions.14 第13页/共35页Description Of The Preferre

18、d Embodimentsn nAvoid The present invention is”n nrefer to the embodiments of the invention as the preferred embodiments,and not as the invention itself 15 第14页/共35页Absolute Termsn nBe careful about using absolute terms,such as“must”,“critical”,Be careful about using absolute terms,such as“must”,“cr

19、itical”,“essential”,“important”to describe features of the invention or other“essential”,“important”to describe features of the invention or other adjectives that might be interpreted as suggesting an element must be part adjectives that might be interpreted as suggesting an element must be part of

20、the inventionof the inventionn nCourts may construe the claims so as to require such features for Courts may construe the claims so as to require such features for infringement,even if the features are not included in the claims infringement,even if the features are not included in the claims 16 第15

21、页/共35页Features Not Present In The Inventionn nIf the specification makes clear that an invention If the specification makes clear that an invention does not include a particular feature,all devices or does not include a particular feature,all devices or methods having that feature may be deemed meth

22、ods having that feature may be deemed outside the claims,even though the language of the outside the claims,even though the language of the claims might be broad enough to encompass claims might be broad enough to encompass products or methods with the feature in question products or methods with th

23、e feature in question 17 第16页/共35页Disclosed But Unclaimed Subject Matter n nBe Careful!Be Careful!n nRecommended to disclose all readily known Recommended to disclose all readily known equivalents in the specification of an applicationequivalents in the specification of an applicationn nBut,the doct

24、rine of equivalents cannot be utilized But,the doctrine of equivalents cannot be utilized to reach disclosed,but unclaimed subject matter to reach disclosed,but unclaimed subject matter 18 第17页/共35页The Use of Functional Language to Define an Elementn nCan create problems if not backed up with solid

25、Can create problems if not backed up with solid information/datainformation/datan nFunctional language alone often does not persuade Functional language alone often does not persuade the Examinerthe Examiner19 第18页/共35页Support for the Claims n nEnsure that the specification provides clear support fo

26、r the claims Ensure that the specification provides clear support for the claims n nThe supporting portions of the specification should be clear and free The supporting portions of the specification should be clear and free from ambiguity from ambiguity 20 第19页/共35页Claims n nProvide claims of varyin

27、g scope Provide claims of varying scope n nPreference should be for structural recitations over Preference should be for structural recitations over functional recitations in device claimsfunctional recitations in device claimsn nA claim should be carefully reviewed to ensure that A claim should be

28、carefully reviewed to ensure that it does not include any limitations that are not it does not include any limitations that are not necessary to define the invention and distinguish it necessary to define the invention and distinguish it from the known prior artfrom the known prior art21 第20页/共35页Be

29、 Clearn nMake sure your claim element is drafted the way Make sure your claim element is drafted the way you intendedyou intendedn nThe mere use of the terms“means”or“step”does The mere use of the terms“means”or“step”does not automatically invoke 35 U.S.C.112,not automatically invoke 35 U.S.C.112,pa

30、ragraph sixparagraph sixn nThe absence of the terms“means”or“step”does The absence of the terms“means”or“step”does not automatically avoid 35 U.S.C.112,paragraph not automatically avoid 35 U.S.C.112,paragraph six six 22 第21页/共35页Be Diversen nConsider use of parallel sets of claimsn none of which is

31、drafted using means one of which is drafted using means(or step)plus function language(or step)plus function languagen nthe other uses structural languagethe other uses structural languagen nOrn none of which is in method format one of which is in method format n nthe other of which is in device or

32、the other of which is in device or apparatus format apparatus format 23 第22页/共35页Responding to 103 Rejectionsn nUnder KSR,Examiners Under KSR,Examiners mustmust still provide sufficient rationale to still provide sufficient rationale to support conclusion that it would have been obvious to combine s

33、upport conclusion that it would have been obvious to combine references.references.n n“There“There mustmust be some articulated reasoning with some rational be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”underpinning to support the legal

34、 conclusion of obviousness.”KSRKSR at 14.at 14.第23页/共35页Responding to 103 Rejectionsn nArgue that Argue that interdependenciesinterdependencies between claim elements are not between claim elements are not disclosed in prior art.disclosed in prior art.第24页/共35页Responding to 103 Rejectionsn nArgue th

35、at prior art Argue that prior art teaches awayteaches away from from combination/bination/modification.n nArgue that claimed combination achieves unpredictable Argue that claimed combination achieves unpredictable results claimed combination achieves results exceeding results claimed combination ach

36、ieves results exceeding or different from those that would have been predicted.or different from those that would have been predicted.第25页/共35页Responding to 103 Rejectionsn nUse of 1.132 Declarations to demonstrate:Use of 1.132 Declarations to demonstrate:n n“Unexpected Results”“Unexpected Results”n

37、 n“Failure of Proposed Combination”“Failure of Proposed Combination”n n“Secondary Considerations”“Secondary Considerations”第26页/共35页Evaluating Subject Matter Eligibility for Process Claims Evaluating Subject Matter Eligibility for Process Claims n nIn re Bilski has declared that the test for determi

38、ning whether a process qualifies as eligible subject matter is to determine:whether(1)it is tied to a particular machine or apparatus,or(2)it transforms a particular article into a different state or thing.(Machine-or-Transformation Test).第27页/共35页Beauregard Claims n nIn Cybersource Corp.v.Retail De

39、cisions Inc.,620 F.Supp.2d 1068(N.D.Cal.2009),the claim at issue was directed to a“computer readable medium”containing program instructions,wherein execution of the program instructions by one or more processors of a computer system causes the one or more processors to carry out certain recited meth

40、od steps.第28页/共35页Beauregard Claims n nIn Cybersource Corp.v.Retail Decisions Inc.,620 F.Supp.2d 1068(N.D.Cal.2009),the claim at issue was directed to a“computer readable medium”containing program instructions,wherein execution of the program instructions by one or more processors of a computer syst

41、em causes the one or more processors to carry out certain recited method steps.第29页/共35页Conclusionn nThings in a U.S.patent are not always as they may Things in a U.S.patent are not always as they may appear to be appear to be n nA claim may be treated as a means plus function A claim may be treated

42、 as a means plus function claim even though it does not use the term claim even though it does not use the term means,or vice versameans,or vice versan nLanguage in the specification may be used to limit Language in the specification may be used to limit a claim even though such a specific limitatio

43、n may a claim even though such a specific limitation may not be found in the claimnot be found in the claim31 第30页/共35页Conclusionn nA term in a claim may be given a narrower or A term in a claim may be given a narrower or different interpretation than would normally be different interpretation than

44、would normally be associated with that termassociated with that termn nA term in a claim may be prohibited from covering A term in a claim may be prohibited from covering an equivalent element under the Doctrine of an equivalent element under the Doctrine of Equivalents,even if the element is truly

45、equivalentEquivalents,even if the element is truly equivalent32 第31页/共35页Conclusionn nRecite physical structure at least in one central element of a claim,if appropriaten nIn a system or an apparatus claim that describes a program that implements a method,recite specific hardware components that performs elements of the method33 第32页/共35页Conclusionn nIf a claim describes transformation of data that represents a physical object,recite the physical object in the claim34 第33页/共35页Thank You35 第34页/共35页