February 05, 2020 Feature

Tethering the Nexus: Framing the Claims for Unclaimed Features and Novelty

Scott F. Peachman

©2020. Published in Landslide, Vol. 12, No. 3, January/February 2020, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Patent litigators are often told to refrain from characterizing claim language, which defines the boundaries of the invention and should remain free from distortion. But there may come a time when claim language does not quite align with the praise for which an invention receives. For instance, claims drawn to a novel pharmaceutical formulation may only later demonstrate unexpected results in clinical trials. Alternatively, an invention may be repurposed for applications that work surprisingly well. In such situations, patent owners should consider how to frame their claim language to best support evidence of objective indicia of nonobviousness in view of controlling law.

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