Claiming Inventions: Philosophies, Principles and Practices

Entry-level practitioners must learn the basic skills and objectives of interviewing inventors.  Students will have the opportunity to participate in several hypothetical scenarios intended to provide experience in dealing with the following key issues: 

• The ethical responsibility to determine who your client is when dealing with multiple inventors, employees and/or corporations; 
• The concept of subject matter disclosure 
• What is an ‘invention’ disclosure- how to discern novel and non-obvious subject matter within the inventor’s disclosure 
• The ethical implications of the ‘lawyer as inventor’ scenario 

For entry-level patent attorneys/agents, there is probably no skill of more importance than the art of searching.  Entry-level practitioners are often called upon to complete searches for senior practitioners, and as such, search training is an essential component of the program.  Training will highlight the following key issues: 

• Different types of searches- novelty; state-of-the-art (i.e. ‘landscaping’); freedom to operate; 
• Searching ‘structure’ vs. ‘function’ 
• Searching for ‘novelty’ vs. ‘obviousness’ 
• How to determine keywords and put together keyword search strings 
• How to locate relevant classifications (CPC, USPC, IPC) 
• Forward/reverse citation searching 
• Training on free search engines (such as Google Patents) versus commercially available such as Lexis TotalPatent One search software 
• How to order searches from professional search companies 

Search results must be analyzed and reported to a client in a manner that provides a meaningful and understandable opinion.  Working off the hypothetical search results, students will learn how to prepare opinions with the following key learning objectives in mind: 

• How to evaluate search results in order to formulate a patentability opinion
• How to properly report a patentability opinion- novel, non-obvious and useful subject matter
• How to properly qualify your patentability opinion

Drafting encompasses two topics- claim drafting and drafting the specification. 
Each is discussed separately below.

CLAIM DRAFTING- It has been said that the most difficult of all legal drafting is the drafting of patent claims.  The claims define the property rights of the invention, and in that respect every single word of each patent claim is significant.  The art of claim drafting combines a detailed understanding of the legal requirements pertaining to claiming and claim interpretation, as well as the judgment required to acquire meaningful protection for your client.  Students will gain an understanding of the following claim drafting concepts:

• Understanding that the claims are the ‘property’ of the patent
• How to define the inventive concept from the inventor’s disclosed embodiment- how to avoid drafting independent ‘picture claims’
• Selecting and naming claim elements – the ‘genus’ vs ‘species’ distinction
• ‘Structural’ vs. ‘Functional’ claim elements and the appropriate use of each
• Claiming in combination
• Providing a proper antecedent basis for claim elements
• Scrutinizing and avoiding unnecessary claim limitations
• How to use method claims:
  • Claiming a series of steps rather than elements in combination
  • Claiming for broad protection against infringement, including inducing infringement
• The role of dependent claims, including:
  • Fallback positions against invalidity
  • Utilizing the principle of ‘claim differentiation’
  • Narrowing in on specific embodiments i.e. ‘picture claims’

SPECIFICATION DRAFTING- Every patent application must include a detailed description of the invention sufficient to enable one of ordinary skill in the art to make and use the invention.   This requires the preparation of a comprehensive disclosure that supports and enables the claimed invention while ensuring that the scope of the protection of the claims is not unduly restricted.  Some of the topics covered include:

• The concept of ‘supporting’ the claims in the specification
• How to prepare illustrations and how to order illustrations from a professional illustrator
• Supporting claim elements with illustrations
• Preparing an ‘enabling disclosure’ for the invention
• The concept of ‘embodiments’ of the invention, and how to broaden the scope of the claims with disclosure of various embodiments
• Avoiding unnecessarily limiting language in the disclosure
• How to properly prepare background, summary and abstract sections of the application

After a patent application is filed, the application must still be processed by the Patent Office in a process known as patent prosecution.  Students will learn the key concepts and skills involved in corresponding with, and responding to the Patent Office during the patent prosecution process, including detailed discussion and experience in the following:

• How to properly prepare for prosecution from the early stages of the file, including:
  • Using search results to foresee issues of novelty and obviousness
  • Proper use of independent and dependent claims to prepare for prosecution
• What is an ‘Office Action’?
• How to respond to Office Actions
• The various types of Office Actions, including:
  • Subject Matter
  • Novelty
  • Obviousness
  • Definiteness
• How to distinguish prior art for the purposes of:
  • Novelty
  • Obviousness
• The concept of ‘file wrapper estoppel’ and how to avoid creating unnecessary limitations during prosecution
• International patent prosecution strategies and how to manage an international patent portfolio

Wissam Aoun is an Assistant Professor at the University of Windsor Faculty of Law. His main areas of research interest include intellectual property law, with a focus on patent law, as well as professional regulation and governance. Wissam is a highly-accomplished intellectual property clinician, with over ten years of international intellectual property clinical experience. He was the founding Director of the International Intellectual Property Law Clinical Program, a USPTO Certified Patent and Trademark Clinic and the world’s first international intellectual property clinic and is currently the IP clinical director of the CEL and LTEC Clinics at Windsor Law.

He has collaborated on research, education and training projects with IP institutions around the world, including the USPTO, the European Patent Office (EPO), the World Intellectual Property Organization (WIPO) and the Canadian Intellectual Property Office (CIPO).