IP Bulletin, November 2012

Edited by Christina Sperry

Drafting Patent Applications to Avoid Claim Scope Disavowal Issues

Now more than ever, care should be taken when drafting patent applications to avoid unintentionally narrowing the claims under the doctrine of claim scope disavowal. While the case law surrounding this doctrine is constantly evolving, there are a number of "best practices" that can be followed at the application drafting stage to minimize the risk of an adverse claim construction ruling down the road. Some of these best practices include drafting carefully any characterization of the "invention" and any critique of the prior art in the specification, and disclosing multiple embodiments of any key claim features whenever possible.