Comments on: Prosecutors – better cover your abstract http://promotetheprogress.com/prosecutors-better-cover-your-abstract/840/ Informed and insightful analysis of patent law issues Tue, 22 Dec 2009 13:32:46 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: J. Matthew Buchanan http://promotetheprogress.com/prosecutors-better-cover-your-abstract/840/comment-page-1/#comment-438 J. Matthew Buchanan Mon, 15 Dec 2008 17:59:54 +0000 http://promotetheprogress.com/blog/?p=840#comment-438 David - Thanks for the comment. I disagree - There are two concerns with the Abstract - meeting the requirements of the rules and regulations, and avoiding any potential limit on claim scope. I think that keeping bullet 2 in mind - which is taken directly from the regulations - when drafting the Abstract reminds the writer that the requirements focus on "the disclosure," and not on "the invention." Remembering this distinction should help to avoid the introduction of any emphasis on "the invention," which is a frequent source of trouble in claim construction analyses. Thanks again for the comment. David -

Thanks for the comment.

I disagree – There are two concerns with the Abstract – meeting the requirements of the rules and regulations, and avoiding any potential limit on claim scope. I think that keeping bullet 2 in mind – which is taken directly from the regulations – when drafting the Abstract reminds the writer that the requirements focus on “the disclosure,” and not on “the invention.” Remembering this distinction should help to avoid the introduction of any emphasis on “the invention,” which is a frequent source of trouble in claim construction analyses.

Thanks again for the comment.

]]> By: David Boundy http://promotetheprogress.com/prosecutors-better-cover-your-abstract/840/comment-page-1/#comment-437 David Boundy Mon, 15 Dec 2008 17:15:13 +0000 http://promotetheprogress.com/blog/?p=840#comment-437 I have a philosophical difference. From the point of view of a patent attorney, the sole purpose of a patent is to create value for the client, and the sole concern in an abstract is to avoid tarnishing that value. Thus bullet 3 is the beginning and end of the analysis. Bullet 2 absolutely must NOT be a "purpose" of the abstract kept in mind when the abstract is drafted. Now it turns out that bullets 2 and 3 are largely congruent - if the abstract focuses on the claims, it will by definition guide a search by focusing on the key technical disclosure. But that's an accidental outcome, not a goal for the attorney. I have a philosophical difference. From the point of view of a patent attorney, the sole purpose of a patent is to create value for the client, and the sole concern in an abstract is to avoid tarnishing that value. Thus bullet 3 is the beginning and end of the analysis. Bullet 2 absolutely must NOT be a “purpose” of the abstract kept in mind when the abstract is drafted.

Now it turns out that bullets 2 and 3 are largely congruent – if the abstract focuses on the claims, it will by definition guide a search by focusing on the key technical disclosure. But that’s an accidental outcome, not a goal for the attorney.

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