Landis on Mechanics of Patent Claim Drafting

Abstract

• 35 USC §112: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention” – this principle dates back to the Patent Act of 1836, and predominates the practice of patent prosecution – this phrase includes two distinct requirements, but satisfying one usually satisfies the other – the core purpose of this clause is to differentiate the patent from the prior art • “Omnibus” claim: This claim style simply specifies “a device substantially as shown and described,” or “any and all features of novelty prescribed, referred to, exemplified, or shown” – this style used to be very common, and is still common in foreign patents, but is now considered non-statutory for failing to “particularly point out and distinctly claim” the invention • Peripheral claiming: 35 USC §112 requires inventors to engage in “peripheral” claiming by delineating the periphery of the patent as viewed against the field of technology and prior art – this is helpful for the public and competitors who wish to avoid the patent, but can be difficult for the patentee, as it requires some foresight about future inventions – to mitigate this difficulty, the courts created the doctrine of equivalents to allow some degree of expansion of the metes and bounds to encompass competing inventions • Statutory classes: 35 USC §101 sets forth four main classes of patentable inventions: “process,” “machine,” “manufacture,” and “composition of matter” (as well as “combinations” and “improvements” thereof) – nothing can be patented unless it can be characterized under one of these four concepts – this statute is often invoked to reject patents for mathematical formulae, algorithms, printed matter, and articles of nature – e.g., no element of a process can be a person (Cardiac Pacemakers, Inc. v. St. Jude Med., Inc. (2002): “third monitoring means for monitoring the ECG signal” was held to specify a human observer, and thus an unpatentable method) – however, these classes are interpreted broadly, manmade organisms are patentable as compositions of matter (Diamond v. Chakrabarty), and applied software and business methods are patentable as processes (State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998))

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