Patent Quality from Continuing Legal Education

The Patent Quality Challenge 1892

The Supreme Court of the United States, in Topliff v. Topliff 1892 stated that “The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy, and, in view of the fact that valuable inventions are often placed in the hands of inexperienced persons to prepare such specifications and claims, it is no matter of surprise that the latter frequently fail to describe with requisite certainty the exact invention of the patentee, and err either in claiming that which the patentee had not in fact invented, or in omitting some element which was a valuable or essential part of his actual invention.”

The Patent Quality Challenge 2008

The Patent Resources Group, Inc., three years ago, noted that “Preparation and prosecution of a patent application has always been a challenging undertaking”, but recently the Federal Circuit has made patent solicitors' lives more difficult in four major respects by:

1. interpreting claims unduly narrowly, resulting in judgments of non-infringement;
2. holding broad claims to be invalid under Section 112, paragraph 1 for lack of written description support;
3. finding incorporation by reference language in a continuing patent to be inadequate, resulting in denial of priority benefits and consequent anticipation by an ancestral patent in the same chain of related patents; and
4. finding patents unenforceable due to inequitable conduct.

Meeting the Challenge: Continuing Legal Education

Frequent changes in the interpretation of patent laws and practices by the courts, on top of the inherent difficulty of Patent Practice, makes continuing legal education, in such specialized teaching centers as the Patent Resources Group, Inc., essential to one who seeks to provide high quality patent services.