Q & A
there any strategies in drafting initial claim
in Drafting Claim Language
Disclaimer:The answer below is a discussion of typical
practices and is not to be construed as legal advice of any kind. Readers
are encouraged to consult with qualified counsel to answer their personal
course, the underlying, basic strategy is for the applicant is to describe
by the claim language the process, machine, article of manufacture, or
composition of matter that he thinks he has invented. That said, however, there are
other things to
Details: By law (35
U.S.C. 112) the Specification of a patent application must contain "one or
more claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention." Therefore, everything on which the
applicant seeks exclusive rights to should be claimed. It is the set of claims that
define what the invention is.
Over time, claim language
in the U.S. has developed its own techno-legal jargon which is very
difficult for ordinary inventor/applicants without proper training or
significant experience to understand. That is one reason why inventors
inexperienced in the ways of the patent office may find it so frustrating
to communicate with patent examiners and why a patent agent can be very
helpful in this process.
It is also likely that no matter
how good you think you are in drafting claims, your first office action
will likely be a rejection of all or nearly all claims you submit. This may be because of a number of
reasons but (assuming you really do have an invention) this initial
rejection is probably due to a lack of common understanding between you,
the applicant, and the patent examiner. In addition, there is a natural
bias as an applicant to seek the broadest possible claims conflicting with
the natural inclination of the patent examiner to narrow them.
A good claim drafting
strategy, therefore, might be to describe in a reasonable way (and paying
close attention to the jargon used in claim drafting) the broadest set of
claims that concisely describe the unique subject matter of your
invention. The patent
examiner's review contained in the first office action will then serve as
a basis for either working towards developing a common understanding of
the subject matter of the invention or modifying the language so as to
capture within it what the examiner will allow.
applicant should recognize that, with respect to business method
invention, patent examiners may be less familiar with the terms of art
used in the financial services areas (including insurance) and, therefore,
more education of the examiner by the applicant may be required. In subject matter areas where a
lot of new invention built upon older technologies is going on the patent
application process may be more routine.
Announcement - On the
Patent Agent to Discuss How Social Media, Peer
Review Can Increase the Value of an IP portfolio
STAMFORD, Conn., Oct. 28
/PRNewswire/ -- Intellectual property expert Mark
Nowotarski, president of Markets Patents and Alliances,
will discuss how new peer review and social media tools can strengthen and
fast track patents at the upcoming annual meeting of the American Institute of Chemical
For more information about
the AIChE annual meeting, which runs from Nov 8 -13 in Nashville, TN, go
to http://www.AICHE.org. Nowotarski will speak Nov.
10 at 12:30 p.m.
As you all know, Mark is
co-editor of this newsletter.
Announcement - TechNet Patents
Patents Forum is an
intellectual property conference focused on practical, proven methods for
driving ROI by transitioning in-house patent teams (in technology,
internet, and software companies) from legal bodies to business
addresses the most critical and timely issues facing the industry
regarding patentable subject matter, legislative reform, cloud
applications, the Bilski case, and responses to doing more with less in
today's challenging economic environment.
featured Keynote Speakers are Robert Stoll, Commissioner for Patents,
U.S. Patent and Trademark Office and Hon. Paul Luckern, Chief
Judge, International Trade Commission.
information about this event, please visit www.worldrg.com/technet.
subscriber to the Insurance IP
Counsel pay only $595 to attend! To register, call customer service
representative Justin Naffah at 781-939-2510
and mention promo code TUB245.
An Update on Current Patent
table below provides the latest statistics in overall class 705 and
subclass 4. The data shows issued patents and published patent
applications for this class and subclass.
Class 705 is defined as:
DATA PROCESSING: FINANCIAL, BUSINESS PRACTICE, MANAGEMENT, OR COST/PRICE
Subclass 4 is used to
identify claims in class 705 which are related to: Insurance (e.g.,
computer implemented system or method for writing insurance policy,
processing insurance claim, etc.).
class 705/4, 1o new patents have been issued since 8/25/2009 for a total
of 55 in 2009 through 10/27/2009.
Patents are issued on Tuesdays each
Patents are categorized based on
their claims. Some of these newly issued patents, therefore, may
have only a slight link to insurance based on only one or a small number
of the claims therein.
The Resources section provides a link to a
detailed list of these newly issued patents.
In class 705/4, 42 new
patent applications have been published since 8/27/2009 for a total of 233
so far in 2009. Patent
applications are published on Thursdays each week.
The Resources section provides a link to a detailed list of these newly
published patent applications.
Again, a reminder
applications have been published 18 months after their filing date only
since March 15, 2001.
Therefore, there are many pending applications that are not yet
published. A conservative
estimate would be that there are, currently, close to 250 new patent
applications filed every 18 months in class 705/4.
patent applications included in the table above are not reduced when
applications are issued as patents, rejected, or abandoned. Therefore, the table only gives an
indication of the number of patent applications currently pending.
Recently published issued U.S. Patents and U.S. Patent
Applications with claims in class 705/4.
The following are
links to web sites which contain information helpful to understanding
United States Patent and Trademark Office (USPTO) :
Homepage - http://www.uspto.gov/
United States Patent and Trademark Office
(USPTO) : Patent Application Information Retrieval -
Free Patents Online - http://www.freepatentsonline.com/
US Patent Search
World Intellectual Property Organization
(WIPO) - http://www.wipo.org/pct/en
Patent Law and Regulation - http://www.uspto.gov/web/patents/legis.htm
Here is how to call the USPTO
Inventors Assistance Center:
- Dial the USPTO's main number, 1 (800) 786-9199.
- At the first prompt press 2.
- At the second prompt press 4.
- You will then be connected to an operator.
- Ask to be connected to the Inventor's Assistance
- You will then listen to a prerecorded message
before being connected to a person who can help you.
The following links will take you to the
Mark Nowotarski - Patent Agent services -
Tom Bakos, FSA, MAAA - Actuarial services
In this issue's
feature article, A Short History of
Private Patent Examination, we provide some history
of how private enterprise has been involved in the past in reviewing
patent applications in order to assure that only patents for valid new
invention were issued. We imply strongly that this past history can be and
is a model for how patent examination may be helped today and in the
In our Patent
Q/A we consider a question on the topic: Strategies in Drafting Claim
claims in a patent application define the invention. Clearly, they must be carefully
thought out by the inventor and the inventor's patent agent.
The Statistics section updates the current
status of issued US patents and published patent
applications in the insurance class (i.e. 705/004). We also provide a link to the Insurance IP Supplement with
more detailed information on recently published patent applications and
mission is to provide our readers with useful information on how
intellectual property in the insurance industry can be and is being
protected - primarily through the use of patents. We will provide a forum in which
insurance IP leaders can share the challenges they have faced and the
solutions they have developed for incorporating patents into their
use the FEEDBACK link to provide us with your comments or
suggestions. Use QUESTIONS
for any inquiries. To be
added to the Insurance IP Bulletin e-mail distribution list, click on ADD
ME. To be removed from our
distribution list, click on REMOVE ME.
Bakos & Mark Nowotarski
A Short History of Private Patent Examination
By: Tom Bakos, FSA, MAAA
and Mark Nowotarski, Patent Agent
Co-Editors, Insurance IP
Private enterprise has
often led the way to solving the most intractable problems patents have
faced in their 500 year history.
The most critical of these problems has been how to tell if an
invention was worthy of a patent or not. Our current patent system is
facing a crisis of an ever increasing backlog. The system of "industrialized"
patent examination developed in the 1800's cannot keep up with the
proliferation of patentable subjects. Private initiatives, in the form
of Peer to Patent, Wiki patent, BountyQuest, Article One Partners, and our
own effort, The Examiner Advocate, are actively exploring new ways to
bring needed expertise into the current process. Crises in the
patent system, however, are not new.
It is instructive to look at how private initiatives worked in the
past to see how we might proceed into the future.
The Dawn of Patent
Patents have been around
since the 1400's. They were
originally limited term monopolies granted by kings. The goal was to encourage the
development of new industries to strengthen the kingdom. A king, however, is not in a
position to judge the technical merits of an invention. In early England, patents were self
examined. The inventor had to
sign an oath that the invention was new. Validity wasn't tested until a
patent was litigated. This
was an expensive and uncertain process.
A different path was taken
in France. A private individual, Stephen
Pascal, president of a regional tax court, sold his office (you could do
that then), moved to Paris, and in 1632 founded a scholarly
society, The Free Academy, for the promotion of discovery and the
examination of inventions. This society of technical
experts made itself available to examine requests for patents. Their first case in 1634 was for
an alleged invention of a new way to determine the longitude (east - west
position) of a ship. The
inventor, Jean-Baptiste Morin, Professor of Mathematics at the
Royal College in Paris, asserted that he had perfected a
method that could do this by careful measurement of the position of the
moon relative to nearby stars.
The Prime Minister of France, Cardinal-Duke Richelieu, commissioned
the Academy to examine these claims.
The questions he posed the Academy were:
- Whether a Longitude Method was disclosed by anyone
before Morin's disclosure.
- Whether Morin really disclosed it.
- Whether said method can be reduced to practice on land
and at sea.
- Whether by means of said method, astronomical tables of
planet movements can be revised more accurately than by the combined
methods heretofore employed.
In short, the prime
minister, on behalf of the king, wanted to know if the invention was new,
useful and not obvious. This
was the first articulation of the standards we have today.
The Academy held hearings
and consulted outside experts.
This included no less an expert in astronomy than Galileo. In response to their inquiries,
"As to Morin's book on the method of
finding longitude by means of the moon's motion, I say freely that I
conceive this idea to be as accurate in theory, as fallacious and
impossible to practice."
The invention was not
practical. Morin had not
described how to overcome the practical difficulties in making the ultra
fine measurements necessary for it to work. Consequently, a patent was
Fast Forward to the
The French Academy continued to serve as the technical
patent examining body in France until 1791. Thomas Jefferson was a patent
agent in Paris at about that time. The initial patent examination
procedure adopted in the US was based on the French
model. For a while, the
US did away with patent
examination, but that did not work well.
In 1836 the modern patent examination system was put in
place. For the first time,
civil servants were employed in examination and patents were organized
into classes to facilitate prior art searching. (Exhibit 1) This system has since been copied
throughout the world and has served us well until the current crisis.
Private initiatives are now
once again exploring fundamental improvements in the patent examination
process. Bounties, social
networks, wiki formats, and independent experts are all being
evaluated. It is here that we
expect to see true innovation and the origins of a fundamentally improved
The bottom line is that
efficient patent examination that results in viable patents on real
inventions has always required the input of experts. The innovation claimed by a patent
applicant must be understood in order to be properly evaluated by an
examiner. The basic
determinations made are: is it new; is it useful (i.e. does it actually
work); and is it not obvious (i.e. is it really innovative). Today, in particular, almost
everything would seem new, useful, and not obvious to a non-expert in the
subject matter area of a claimed invention. Therefore, experts and
expertise will play a very important role in evaluating innovation.
is quite clear that the esoteric nature of invention today severely taxes
the abilities of modern patent examiners who cannot possibly be expert in
every new facet of all of the new scientific and business fields that are
emerging. It is much more
efficient to get experts involved on an as needed basis during the
examination process to help insure that only respected high value patents