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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Quick takeaways
Crafting clear, concise, and complete claims is crucial to adequately protect the invention and avoid speculation.
Understanding the legal requirements for infringement and anticipating potential infringers is essential in claim drafting.
Consider divided infringement and strategically draft claims to cover different steps or elements performed by different entities.
Deep dives
Understanding the Importance of Claims in Patenting
The claims of a patent are crucial as they define the subject matter protected by the patent application and delineate the exact boundaries of ownership.
Crafting Clear and Complete Claims
When crafting claims, it is important to be clear, concise, and complete to ensure that the patent application adequately covers the invention and does not leave room for speculation.
Identifying Infringement and Anticipating Infringers
Claims must be drafted in a way that allows for the identification of infringement and the anticipation of potential infringers. Understanding the legal requirements for infringement is essential.
Divided Infringement and its Implications
Divided infringement occurs when different entities perform different steps of a patented method or use separate elements of a patented system. It is important to consider divided infringement when drafting claims.
Case Study: Cinjenta v. Willowood
The case study highlights the complexities of patent claims and infringement in the agrochemical industry, emphasizing the importance of strategic claim drafting and identifying parties involved in the infringement.
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.