PATCLAIM: Tiptoeing through the patent claim minefield?

"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," wrote the U.S. Supreme Court more than a century ago. "[I]n 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." Topliff v. Topliff, 12 S. Ct. 825, 831 (1892).

But what if that inexperienced person works in your organization?

In that event, he or she can reach for a resource such as Patent Claims, Third Edition, patent practitioner (and former patent examiner) Ernest Lipscomb's exhaustive treatise covering the requirements, drafting, construction, and expansion of patent claims. The treatise includes discussion of many issues specific to particular types of claims, such as composition-of-matter claims and claims for new chemical compounds. The full text of this publication is contained in the newly released Patent Claims database (PATCLAIM) on Westlaw. Sections are brief and easy to read, and most contain links to cited authorities and to the West Key Number Digest (Custom Digest). Use the Table of Contents service to browse the contents and view relevant sections by clicking section names.

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