The Art of Patenting Science
Patents protect novel and non-obvious functional aspects of an invention (i.e. the physical embodiment or practical application of a new idea, namely a machine, article of manufacture, process, or chemical composition). In other words, patents protect the application of science (leaving methods of doing business method aside for this discussion). The way in which patents protect the application of science is through the "claims" in a patent. Patent claims define the scope of what is covered by the patent. Many recent U.S. Supreme Court cases and Federal Circuit Court of Appeals cases relating to patent validity and enforcement underscore the fundamental principle that patent claims must be carefully drafted in order to provide the desired patent scope. While a patent protects applications of science, drafting patent claims is more of an art than an exact science. From the protection of pesticide resistant soybean plants and cultivations methods in the patent dispute between Monsanto and an Indiana farmer to subject matter eligibility and indefiniteness issues with regard to computer-implemented methods/software (e.g. Function Media, L.L.C. v. Google and CLS Bank v. Alice Corp (Fed. Cir. 2013)), enforcement and validity turn on the language in the patent claims. Appeals in all of these cases are currently pending at the U.S. Supreme Court of the Federal Court of Appeals. Time will tell whether the subject patents have claims which will withstand scrutiny and be found enforceable and infringed or whether the claims, for whatever reason, fail to be sufficient.
Patent attorneys are the artists who translate inventors' work to patent claims. However, changing patent laws, judicial decisions interpreting the patent laws and every changing U.S. Patent Office interpretation and examination procedures all lead to uncertainty in what patent claims will be valid and enforceable today and over the 20 year patent term. Therefore, patent claims must be composed using ones creative mind to envision how the law, the courts, and the Patent Office will act over the next twenty years.
Like forecasting the weather, while patent claims are based on historic data, models and real-time facts, patent claims writing requires ingenuity, creativity and inventiveness, i.e. the skills of an artist. Creativity in claims drafting helps to ensure enforcement and validity of patents. The best patent attorneys are true artists taking an inventor's work and molding it into a defendable patent.
© Stephen J. Weyer, Stites & Harbison, PLLC, 2013Send email feedback- sweyer@stites.com
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