Preventing Technical Misinterpretation in Patent Applications

Patent examiners at the USPTO will often reject patent applications using the wrong standard for inherent disclosure of a claimed feature. For example, our client recently received an inherency-centric rejection that asserted one of skill in the art "would expect" the prior art to have certain claimed properties. This is the incorrect standard for establishing inherency. Here are some of my favorite case law quotes for pushing back against a weak rejection based on inherent disclosure. Par Pharm. v. TWI Pharms., 773 F.3d 1186, 1195-96, 112 USPQ2d 1945, 1952 (Fed. Cir. 2014) ("A party must, therefore, meet a high standard in order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis - the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.") Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009) (“The very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.” (Emphasis added)). As stated in MPEP 2112 “[i]n relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” (quoting Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990)) (emphasis in original)).   “The inherent result must inevitably result from the disclosed steps; ‘[i]nherency . . . may not be established by probabilities or possibilities.’” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). MPEP 2112: In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999): “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.’ ” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971), (“[T]he examiner must provide sufficient evidence or scientific reasoning to establish the reasonableness of the Examiner’s belief that the functional limitation is an inherent characteristic of the prior art.”) In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) (reversed rejection because inherency was based on what would result due to optimization of conditions, not what was necessarily present in the prior art).  Anyone have any others? #patents #patentlaw #uspto

Section 101 rejections remain one of the toughest hurdles for software patents. How you approach it can make all the difference. The real question isn’t whether the invention does something useful—it’s whether it solves a technical problem in a technical way. That’s where many applications go wrong. Too often, they frame the idea as a business objective implemented on a computer. The USPTO sees right through that. What examiners want to see is a clear, concrete improvement in computing itself—faster processing, better memory use, more secure data handling, or new interactions between hardware and software. When I work with software clients the goal is always the same: make the invention sound like engineering, not abstraction. That means precise claims, supported by a detailed specification with diagrams, pseudocode, and performance data. If you can show how the invention improves technology, you’ve already done half the work of overcoming Alice. I also encourage clients to anticipate 101 early. Build the eligibility rationale right into the application. Don’t wait for a rejection to start thinking about it. During prosecution, be prepared to cite the USPTO’s own examples, talk to your examiner, and if necessary, use declarations to emphasize what’s unconventional about the invention. Software remains patentable in the U.S.—but only when it’s drafted as a technical solution, not a business plan translated into code. The difference is subtle, but it’s the difference between rejection and allowance.

Patent Pitfalls: Common Mistakes in Indian Patent Applications Navigating the Indian patent system requires meticulous attention and legal understanding. Here are the most common mistakes applicants make—and how to avoid them: - **Insufficient Disclosure:** Many applications fail due to vague or incomplete technical descriptions. The invention must be explained in enough detail, with drawings or examples, so that a person skilled in the art can reproduce it. Omitting essential steps or making general, unsupported claims often leads to rejection. *How to avoid:* Clearly describe every feature, process, or component and support general statements with examples or technical details. - **Lack of Prior Art Search:** Failing to perform a comprehensive prior art search results in patents being denied for lacking novelty or inventive step. Relying only on Google is not enough. *How to avoid:* Search patent databases locally and internationally, and review similar inventions for overlap. - **Inadequate or Incorrect Documentation:** Missing forms, wrong inventor names, or incomplete specifications are routine issues that compromise the process. *How to avoid:* Double-check all paperwork for accuracy and completeness before submission. - **Improperly Drafted Claims:** Claims that are too broad, narrow, or ambiguous can either invalidate the patent or leave it with insufficient protection. *How to avoid:* Use terminology precisely and balance the claim scope; have claims reviewed by a patent attorney. - **Premature Disclosure:** Publicizing the invention before filing (in presentations or publications) risks losing rights in India’s “first-to-file” system. *How to avoid:* Always file before any public disclosure and use non-disclosure agreements with collaborators. - **Missed Deadlines:** Delayed filings or failing to meet examination/response deadlines result in abandonment or loss of rights *How to avoid:* Track all statutory deadlines closely. - **DIY Approach:** Without professional help, applicants often make drafting or procedural errors due to unfamiliarity with Indian law. *How to avoid:* Consult a registered patent agent or attorney at every stage for compliance and strategy. By carefully describing the invention, researching thoroughly, managing documents, and seeking legal guidance, inventors can steer clear of major patent pitfalls and improve their chances of a successful patent grant in India.

#EPO - No to interpretative somersaults when interpreting claims. If the Patentee wanted to use a narrower meaning, they must remedy this by amending the claim. Catchword of T 2027/23 : A claim should not be interpreted, based on features set out in embodiments of an invention, as having a meaning narrower than the wording of the claim as understood by the person skilled in the art. In cases of discrepancy between the claim language and the description, it falls upon the patentee to remedy this incongruence by amending the claim. It is not the task of the Boards of Appeal to reach such alignment by way of interpretative somersaults Even after G 1/24, the board finds no authority for interpreting a claim more narrowly than the wording of the claim as understood by the person skilled in the art would allow. https://lnkd.in/gV2qPWWg

WATCH YOUR WORDS When your expert brings a different claim construction to court... …than the one everyone actually agreed to. 😳 Recently, the U.S. Court of Appeals for the Federal Circuit politely reminded us of a core patent litigation rule: 👉 You don’t get to change the meaning of the claims after the game starts. In Little Giant v. Tricam, the case turned on one humble word: “Cavity.” The parties (and the court) agreed it meant: a hollowed-out space that does NOT pass all the way through. But Little Giant’s expert applied a definition of “cavity” that went beyond the court’s construction... effectively sweeping in pass-through spaces that the claim construction ruled out. The result? Expert testimony excluded. No literal infringement (only ~20% inside ≠ “more than a majority”). Doctrine of equivalents barred by prosecution history estoppel. Summary judgment affirmed. And the Federal Circuit said the quiet part out loud: An expert opinion based on a materially different claim construction doesn’t get a seat at the table. Founder takeaway: The words you choose during prosecution matter. The concessions you make matter. And you don’t get to “reinterpret” them later because it’s convenient. From the examiner’s desk to the courtroom: Claims are technical commitments. Definitions are not open to reinterpretation. And prosecution history never forgets. Protect accordingly.