About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Contact the Docs


  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat #8 Overall Rank


« Conference & CLE Calendar | Main | Ariosa Diagnostics, Inc. v. Sequenom, Inc. (Fed. Cir. 2015) »

June 21, 2015


Patent Profanity and traps for the unwary only create more (not less) need for artful scrivining.

Have the courts not considered this?

Good point. When we artfully draft claims so that they meet the requirements of statute and case law, we are criticized for being "clever draftspersons." But when we don't, well, that's our fault.

Academics and the judicial branch alike try to do what our constitution only provides for Congress to do.

When claims meet the requirements under law, the law should not be perverted just because those two groups "feel" that patents are not "right."

The fact that these two groups don't mind violating the law (and the Rule of Law) themselves to reach their desired ends appears to be too subtle a point for them to understand.

This case, combined with the 101 cases, creates a catch-22 for those attempting to draft effective diagnostic claims. To survive 101 review we are compelled to add steps, often ones that involve acting on the information revealed by the diagnostic information(e.g. administering an appropriate drug). As more steps are added it becomes increasingly likely that more than one party will be (or can arrange to be) involved in practicing the method, which gives everyone a free pass according to the logic of this case.


That begs the question: WHY must patents only be to those things that are "single-actors"...?

Even Prof. Lemley in his involvement in the prelude to changes incorporated into the America Invents Act made a strident point that in most cases today, "invention" is a group activity. Why not then, should transgression of that invention not be allowed to be a similar group activity? Why must it ONLY be a single actor?

All we are doing is playing games and inviting more complex scrivining.

The comments to this entry are closed.

May 2024

Sun Mon Tue Wed Thu Fri Sat
      1 2 3 4
5 6 7 8 9 10 11
12 13 14 15 16 17 18
19 20 21 22 23 24 25
26 27 28 29 30 31