Michael Van Loy, a Member in the Intellectual Property Section of the law firm of Mintz Levin, discusses the contents of a patent including the description and claims. Mike has his bachelors in chemistry and his PhD in environmental engineering from the University of California, Berkley. He also has his law degree from Santa Clara University.
Mike was named a San Diego Super Lawyers Rising Star for Intellectual Property in 2016.
Mike’s practice focuses on all aspects of Intellectual Property, or IP strategy, which include:
- Development of IP portfolio
- Investigation of patentability
- Drafting and prosecution of patent and trademark applications
- Patent infringement
- Preparation and support for patent litigation
- Licensing negotiations, and
- Monetization strategies for IP portfolios
Let’s listen to his take!
The Content of a Patent
According to Mike:
“The claims are pretty much crucial. The format of a patent application is generally a description that runs through what the invention is. Then maybe a little bit of a discussion of what kind of problem you’re solving. For various reasons, under U.S. patent law, you don’t like to necessarily lay out specifically what the problem is because then if your technology ends up solving another problem, then an infringer might argue that it doesn’t really cover what they’re doing. At a high level, you run through what the problem is and why you’re an improvement over what was done before. Then write a fairly technical and reasonably specific description of what it is that you do and some alternatives to that that you think would be work arounds. Then write some claims that are written in English. A claim is one long sentence that looks kind of dense. It’s written in a strange syntax. It basically lays out all of the elements that you consider to be within your invention. It would be required by an infringer.”
We hope you found this valuable. See the full interview with Mike here.
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