Patently Strategic - Patent Strategy for Startups

Patent Claims: The Name of the Game

Oct 6, 2023

The podcast discusses the importance of patent claims in defining and protecting intellectual assets. It covers claim drafting strategies, overcoming software rejections, and understanding different types of patent claims. The speakers also explore the patentability of method of treatment claims and the significance of including a jury figure in patent claims. Additionally, they discuss the liability of importing products made by a patented process and compare different claim types in patent infringement cases.

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INSIGHT

Claims: The Core of Patents

Patent claims differentiate strong patents from weak ones.
They determine the scope of protection and a patent's value.

ADVICE

Clear Claim Drafting

Write clear patent claims that define the invention's boundaries.
This clarity is crucial for both patent prosecution and enforcement.

ADVICE

Claim Transitions

Use "comprising" as the most common claim transition.
Avoid "consisting essentially of" due to its ambiguity and litigation risks.

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We’re talking about claims – the fundamental building blocks of a patent. There simply is not a more important concept to grasp in all of patenting. As a former chief justice of the Federal Circuit once famously said, “The name of the game is the claim.” And in terms of what game you’re playing, the claims are where you separate the patents playing checkers from the patents playing chess.

This is where your patent practitioner earns their money and as you’ll learn today, also where the most costly mistakes can be born. As David Cohen, a Patently Strategic regular, has said in the past, "Ninety percent of the mental exercise in drafting patents is in the strategy of looking around corners, anticipating the future, and trying to capture as many would-be infringers as possible.” How your claims are crafted is literally the difference between a patent being an intellectual asset and a worthless stack of paper.

In this month’s episode, Ty Davis, Patent Strategy Associate here at Aurora, leads a discussion, along with our all star patent panel, delving deeply into:

⦿ Claim fundamentals
⦿ Claim drafting strategies
⦿ How to think about claims in the context of infringement
⦿ And in the game of patenting, how to move like a queen, so you’re not treated like a pawn.

Ty is joined by our always exceptional group of IP experts, including:

⦿ Dr. Ashley Sloat, President and Director of Patent Strategy at Aurora
⦿ Kristen Hansen, Patent Strategist at Aurora
⦿ Dr. David Jackrel, President of Jackrel Consulting
⦿ Marie Smyth, Patent Agent, formerly with Greenberg Traurig and Meta
⦿ Porter Thames, J.D. and Patent Agent at SMU Science and Technology Law Review

** Mossoff Minute **

This month's Mossoff Minute, featuring Professor Adam Mossoff, looks at the poorly named Advancing America's Interests Act and its potential impact on the ITC being able to block import of products that infringe on American patents.

** Resources **

⦿ Patent Anatomy Episode: https://www.aurorapatents.com/blog/new-podcast-patent-anatomy
⦿ Patent Anatomy Guide: https://www.aurorapatents.com/blog/patent-anatomy-whats-in-a-patent

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Thanks for listening!

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Note: The contents of this podcast do not constitute legal advice.

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