The specification has always been a critical part of the patent application, but in recent years the importance of the specification has taken center stage. Whether it be with respect to defining computer-implemented inventions so as to ensure overcoming patentability hurdles or ensuring enough detail to use means-plus-function claims, there has been no shortage of cases interpreting the requirements of 35 U.S.C. 112 from both the Supreme Court and the Federal Circuit.
Even what we thought we knew, that Nautilus v. Biosig Instruments was the law of the land, has recently been called into question. The U.S. Patent Office and PTAB are not following the Supreme Court’s Nautilus decision, and instead of continuing to apply In re Packard when determining when a patent claim is definite, acknowledging that this is a more restrictive standard. Indeed, the PTAB made this point precedential in Ex parte McAward on August 25, 2017, specifically refusing to apply Nautilus.
What does this changing landscape mean for patent application drafting best practices?
- Nautilus versus In re Packard.
- Identifying the invention/improvement versus KSR 103 concerns.
- Best practices for ensuring a complete and thorough specification.
- Means-plus-function and other 112 matters.
Leading the webinar is Gene Quinn, founder of IPWatchdog.com, Todd Van Thomme, a shareholder in Nyemaster Goode, Cynthia Gilbert, founding partner at Blueshift IP, LLC and Dave Stitzel, IP Solutions Consultant at LexisNexis® IP.
Gene Quinn is the founder of IPWatchdog.com, a patent attorney, law professor, and leading commentator on patent law and innovation policy. Gene’s writings typically focus on pending legislation, rulemaking at the United States Patent and Trademark Office, and general commentary about the state of the industry. Gene practices patent law with Widerman Malek, and the majority of his patent practice is focused on software patents and Internet innovations. Since 2000 he has also been a principal lecturer in the PLI Patent Bar Review Course.
Todd Van Thomme
Todd Van Thomme is a shareholder in Nyemaster Goode’s Intellectual Property Department. Todd counsels clients on how to avoid intellectual property disputes and resolve them in a cost-effective manner. He has extensive experience drafting and prosecuting patent applications across a wide array of technologies, particularly food science, mechanical, and chemical-related patent applications, as well as extensive experience drafting patentability, non-infringement, and invalidity opinions across a variety of technologies, in particular opinions related to mechanical, food science, pharmaceutical, and nutraceutical patents and patent applications.
Cynthia Gilbert is founding partner at Blueshift IP, LLC. Her practice focuses on the strategic development of patent portfolios for a range of computer technology companies in all stages of the invention life cycle: start-ups, emerging companies, and established public companies. She has developed deep experience across a wide range of technology disciplines. She is honored to have worked for clients ranging from the smallest start-ups to billion-dollar companies and brings a lifelong passion for technology to her work with every client. Cynthia is registered to practice law in Massachusetts and before the U.S. Patent and Trademark Office. She previously founded Hyperion Law, a successful software patent boutique firm, and prior to that worked as a senior attorney in the intellectual property department at one of the nation’s leading law firms.
Dave Stitzel joined LexisNexis® in 2015 as a Corporate Legal Client Manager in Dayton, Ohio. Dave transitioned to Reed Tech®, a LexisNexis Company, as an IP Solutions Consultant in 2017.
Prior to joining LexisNexis, Dave obtained extensive experience drafting and prosecuting patent applications as a patent attorney with various intellectual property boutique law firms, including over five years with Oblon, McClelland, Maier & Neustadt. Dave also has two years of experience as a chemical and biotechnology patent examiner with the U.S. Patent and Trademark Office. Dave is registered to practice before the USPTO.