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NEWS
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USPTO - Inadvertent Restriction of Claim Scope
Gareth Dixon and Paul Harrison May 2006
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In a recent decision of the Court of the US Federal Circuit, Koepnick Medical & Education Research Foundation v Alcon Laboratories, the Court held that any discussion throughout the specification of an invention’s major advantage over the prior art serves to define and limit the scope of the claims.
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Accordingly, a patent specification containing statements as to advantages provided by the invention may inadvertently result in claims that are construed as being of a scope that is narrower than that intended by the draftsperson. Current US practice does not require alleged advantages over the prior art to be specified. Care should be exercised, therefore, when drafting US-bound patent specifications, to ensure that any discussion regarding advantageous aspects of the invention does not have adverse repercussions further down the track.
Further, the Court also found that a patentee’s failure to dispute the USPTO’s Reasons for Allowance constitutes a concession that those reasons alone support allowance. This appears to impose on patentees a duty to engage in post-allowance debate - which has long been considered superfluous. Should a patentee have any concerns regarding the Reasons for Allowance, it would be prudent to discuss them with an IP professional.
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 Download PDF version (173 KB)
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for further information contact garethdixon@ShelstonIP.com
or paulharrison@ShelstonIP.com
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