United States: Key Lessons From Patent Litigation For Drafting And Prosecuting Utility Patent Applications

In almost every U.S. patent suit, the patentee's counsel considers how the case could have been facilitated had the patent at issue been drafted and prosecuted differently. These considerations demonstrate that patents should be drafted and prosecuted with an eye toward the possibility of litigation. There have been several landmark decisions in patent cases that directly impact patent prosecution. This article analyzes some of those decisions in chronological order to provide suggestions for a patent prosecutor in drafting or prosecuting a patent application.

  • The term "invention" should be cautiously used in the description section of the specification and during prosecution.

    The implementation protected by a patent is set forth in the claims. Prosecutors have traditionally used the term "invention" in the specification and during prosecution to highlight aspects of the claimed implementation. In 2007, the Federal Circuit, however, noted in Verizon v. Vonage that "[w]hen a patent ... describes the features of the present invention as a whole, this description limits the scope of the invention."

    As the scope of the patent is well understood to be defined by the claims, this Federal Circuit ruling indicates that the use of the term "invention," even when used in the specification or during prosecution, can narrow the scope of the claims. To avoid the issue of whether each disclosed "invention" limits the claims during a possible infringement suit, prosecutors should typically avoid use of the tem "invention" throughout drafting and prosecution.
  • The path of attaining an end result should be described in the specification.

    Subsequently, in 2010, the Federal Circuit ruled in Ariad v. Lilly that: (a) 35 U.S.C. §112 requires the written description requirement in that section to be separate from the enablement requirement therein, and (b) the description in the patent application satisfies the written description requirement when "the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." The Court indicated that a patent that merely describes a desired outcome instead of showing to a skilled artisan how that outcome can be achieved does not satisfy the written description requirement.

    This decision highlights the importance of presenting in the application the path taken to reach an outcome instead of merely presenting the outcome. While drafting applications in the biotechnology arena, prosecutors may benefit by not only mentioning, for example, molecules capable of performing a functionality but also supporting those claims in the specification with examples, which can be working or "prophetic," of performing that functionality or supporting those claims with a description of how the claimed molecules are synthesized to perform the functionality. This holding is extendible to other areas as well. For instance, in drafting applications in the software space, prosecutors should consider not only mentioning, for example, a black-box computer configured to achieve an end result, as approved in some traditional patents, but also additionally specifying how that black-box functions to attain the end result.
  • The claimed invention should be sufficiently described in the application to teach a layman how to reproduce that invention.

    On June 2, 2014, the U.S. Supreme Court held in Nautilus v. Biosig that "a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." The Court also indicated that "a patent must be precise enough to afford clear notice of what is claimed, thereby 'appris[ing] the public of what is still open to them.'" This is the evenhanded result because a patent provides a patentee with monopoly over a claimed territory; this monopoly is a property right; and "like any property right, its boundaries should be clear" (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.).

    In light of this ruling, prosecutors should describe the claimed invention in sufficient detail in the specification to teach a layman how to reproduce the claimed invention. For example, in an application directed to an engine, prosecutors should consider disclosing all aspects of the engine, including those well understood by a skilled artisan. Even though the legal test for indefiniteness does not require that a layman be able to reproduce the invention—the test only requires that one of ordinary skill in the art can reproduce it—having this layman constraint is favorable because enabling a layman to reproduce the invention ensures that a skilled artisan can reproduce it as well. This can prevent a party trying to invalidate the patent from successfully asserting that a skilled artisan has a low level of skill and thus cannot reproduce the claimed invention.
  • Business methods performed by computing systems should be described with a detailed level of computational granularity.

    Subsequently, on June 19, 2014, the U.S. Supreme Court ruled in Alice v. CLS Bank that a claim is invalid when it is: (1) directed to patent-ineligible subject matter such as a law of nature, a natural phenomenon, or an abstract idea, and (2) fails to recite something significantly more that can transform the patent-ineligible concept to a patent-eligible concept. Notably, the Court stated that a "mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."

    The disputed patent in Alice was directed to intermediated settlement, which the Court deemed as abstract for being "a fundamental economic practice" (quoting Bilski v. Kappos). This ruling has perplexed many, because: (a) although the Court considered fundamental economic practice to be an abstract concept, the Court did not provide an exhaustive list of all areas that should be deemed abstract; and (b) the Court did not provide clear details on what should be considered "significantly more." To address these two issues, the U.S. Patent and Trademark Office ("PTO") published several examination guidance and training documents with examples of abstract concepts, non-abstract concepts, and limitations that qualify as "significantly more." Despite the PTO's efforts, in many instances PTO examiners and applicants still disagree as to whether pending claims satisfy the above-referred limitations.

    To avoid such disagreements, prosecutors drafting applications directed to business methods can benefit by presenting implementations with a detailed level of computational granularity. The prosecutors can elucidate on, for example, structural details of computational architecture, architectural components involved, distinct manners in which those components function, and how and why those components perform in the distinct manners. These details can enable the prosecutor to argue that these details describe improvements to the functioning of the computer (which is one of the limitations qualifying the subject matter as "significantly more"), thereby rendering the claimed concept as "significantly more" and thus patent-eligible even if the claim is assumed by the PTO examiner to be abstract.
  • Claims should be drafted from the perspective of a single actor (e.g., a computing server) rather than multiple actors (e.g., a computing server and a third party).

    In August 2015, the Federal Circuit ruled in Akamai v. Limelight that an alleged infringer may infringe even where a step recited in the claim is employed by a third party, such as a customer of the alleged infringer. This ruling was a reversal of the Court's previous decision where the Court had found that the alleged infringer did not infringe when one step of the claim was performed by the customer. The Court reversed its judgment because evidence showed that "[the alleged infringer]'s customers do not merely take [the alleged infringer]'s guidance and act independently on their own. Rather, [the alleged infringer] establishes the manner and timing of its customers' performance so that customers can only avail themselves of the service upon their performance of the method steps."

    A patent may therefore be infringed by an alleged infringer even where a third party associated with that alleged infringer performs some claimed steps, but only when the third party is under the alleged infringer's guidance. A prosecutor should accordingly not include in the claims a step performed by a party not under the patentee's guidance. A more risk-averse prosecution strategy is to present each claim from the perspective of a single actor characterizing the tangible element (for example, a processor) intended to be protected by the patentee, thereby eliminating the concern of whether the party performing a claimed step is under the patentee's guidance.


The suggestions above can help a prosecutor draft and prosecute applications that, once patented, are strong enforcement weapons and, at the same time, present a reduced risk of being successfully challenged for invalidity.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Gurneet Singh
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.