美国专利申请文件撰写讲义[精选].ppt

Conclusion A term in a claim may be given a narrower or different interpretation than would normally be associated with that term A term in a claim may be prohibited from covering an equivalent element under the Doctrine of Equivalents, even if the element is truly equivalent * Conclusion Recite physical structure at least in one central element of a claim, if appropriate In a system or an apparatus claim that describes a program that implements a method, recite specific hardware components that performs elements of the method * Conclusion If a claim describes transformation of data that represents a physical object, recite the physical object in the claim * Thank You * * * * * * * * * * * * * * * * * * * * * * * * * California :: Delaware :: Florida :: New Jersey :: New York :: Pennsylvania :: Virginia :: Washington, DC :: Advice for Drafting Patent Applications in the Wake of Recent Changes in U.S. Law William Rowland and Weiwei Stiltner Buchanan Ingersoll Rooney PC After KSR, the Standards Continue to be Tightened USPTO Board of Appeals 2004 2006 2008 AFFIRMED, AT LEAST IN PART 48.7% 55.8% 69% REVERSED OR REMANDED 45.5% 40.4% 28.2% October 10, 2007 PTO Guidelines Must read for any practitioner handling US prosecution Identified seven “Rationales” supporting a legal conclusion of obviousness Each “Rationales” includes specific examples based on case law What attributes should a well-written patent application have? Describe the invention so one of ordinary skill can understand it Disclose the best mode Provide support for subsequent amendment of claims Claims narrow enough to avoid prior art Claims broad enough to hamper design around The “well-written” patent application * Claims clear enough to provide notice Factually accurate Suitable vehicle for foreign filing Tell a story The “well-written” patent application * Initial Preparation It is important to have a good understanding of the most relevant prior art Don’t want to amend the claims if not