Ernest I. Gifford and Avery N. Goldstein
8.4 Reviewing a patent application draft
The draft of the patent application is reviewed in much the same way as a draft for a scientific publication, but with some differences. The draft should be reviewed for accuracy, for typographical errors, and for lapses in logic in the flow of scientific reasoning. If there are figures, the numbers on the figures should match the corresponding numbers in the specification of the patent application. Generally, the specification of the patent application is written in the language of the ordinary scientist or engineer, while the
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claims are written in terms more familiar to the attorney or agent. However, since it is well recognized that a jury is sometimes the eventual audience of the specification, and also of the claims, the inventor should review both the specification and the claims. A major difference between a scientific manu- script and a patent application is that once an application is filed with the Patent Office, the entry of ‘‘last-minute’’ data is forbidden. This situation is called the prohibition against new matter, under 35 U.S.C. 132.
8.4.1 Example of a patent where the specification succeeded in supporting an invention described in a claim
The inventor needs to review the patent specification to make sure that the descriptions in the claims find support in the specification. Where material in the claims is ambiguous, and the ambiguity cannot be cleared up by viewing the specification, the claim may be invalidated. An example of a fact pattern where the claims contained an ambiguous term, but where the day was saved for the inventor because the specification cleared up the ambi- guity, is shown below in the Case Studies inAmgen v. Hoechst and Transkar- yotic Therapies(D. Mass. 2001) [58].
The specification of the patent application, alone, does not give the patent holder any patent rights, i.e., the right to prevent others from making, using, or selling the patented invention. This right depends on the existence of the claims. The claims, in turn, must be written in a way that carve out the claimed invention from the language in the specification. The inventor needs to provide the patent attorney with enough information so that the attorney can include examples and definitions in the specification, in order to protect the patent, in the event that some ambiguity is found in the claims. Thus, the inventor should read and review the claims before the patent application is filed, to make sure that they are scientifically accurate, and to make sure that they track the supporting material in the specification.
8.4.2 Example of a patent where the specification failed to support an invention described in a claim
Tronzo v. Biomet(Fed. Cir. 1998) provides an interesting example of a patent that could have benefited from a more thorough review by the inventor [60].
Raymond Tronzo’s patent, U.S. Patent No. 4,743,262 concerned an artificial hip socket that included a structure called a body. The specification in- cluded commentary on a body with a conical shape (a cup with slanted edges). The claims described a body with a conical shape. However, the claims also described bodies having a variety of other shapes, even though the specification described only the conical-type body.
During a subsequent lawsuit, Mr. Tronzo’s claims were found to be invalid, because they were too broad, as compared with the specification.
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The specification failed to disclose examples of bodies with several different shapes. Biomet, another party, began to manufacture artificial hip sockets with a hemispherical shape. Mr. Tronzo accused Biomet of infringing his patent. The court found that Mr. Tronzo’s claim did, in fact, describe Bio- met’s artificial hip socket, but that Mr. Tronzo’s specification did not support the claim. The result was that the court decided that Mr. Tronzo’s claim was invalid. The take-home lesson is that the inventor should compare the claims with the specification to make sure that whatever is described in the claims has some corresponding description in the specification.
8.4.3 Writing style in a patent application necessarily differs from the writing style in a scientific publication
In reviewing the patent application, the inventor needs to delete any sub- jective remarks that may appear in the draft. Scientific publications some- times contain comments such as ‘‘Our discovery simply involved putting two plus two together’’ or ‘‘Our discovery involved combining our earlier published work with the published work of the Japanese research group.’’
Comments like these will inspire the examiner to reject the claims, where the rejections will be under 35 U.S.C. 103 (obviousness rejection). Although an applicant is required under ‘‘Rule 56’’ (37 C.F.R. §1.56) to submit all relevant publications, including publications by the applicant, the applicant is not required to disclose inventive thought processes. Scientific publications also may contain comments as ‘‘Our discovery was surprising and amazing’’ or
‘‘The technology we used was difficult and unpredictable.’’ These types of comments, in a patent application, will likely inspire the examiner to allow claims that cover the exact work done by the inventor, but to reject any claims that are broader than the exact work that was done. The purpose of the claims is to cover the invention itself, but also to cover other embodi- ments, e.g., predicted embodiments, as well as embodiments that cannot be predicted at the time of filing the patent application. Thus, comments as to inventive thought processes, unexpected nature, or difficult nature of the invention should be deleted from any application before it is filed. For example, in Biogen, Inc. v. Berlex Laboratories (Fed. Cir. 2003) [62] the patent specification described a method involving one vector, but did not describe a method involving two vectors. The applicants wanted their claims to cover a method involving two vectors. The patent specification contained the subjective comment that there were ‘‘technical problems involved with introducing DNA fragments.’’ In view of these subjective comments relating to ‘‘technical problems,’’ the court held that the appli- cant’s claims could not cover a method involving two vectors. In addition to proofreading the application for subjective comments, the applicant should also clear up ambiguities in the definitions of words. Specifically, any word appearing in the claims that is to have a meaning other than that found in a
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standard dictionary should be clearly defined in the specification — see.
e.g.,Process Control v. HydReclaim(Fed. Cir. 1999) [63]. The take-home lesson is that once the patent application is written, the attorney or agent should give a copy to the inventor, and the inventor should read the claims to make sure that they are technically accurate, and do not contain contradictions or errors in logic or grammar.