Imagine an inventor wants to patent a new pen. The lawyer preparing the patent application has a deceptively simple two-part task: write a description of how to make and use the pen-invention and state claims that establish the boundaries of the exclusive rights that the patent will grant.
In drafting the patent application, the lawyer must strike a delicate balance. To earn a patent, the application must demonstrate that something about the pen is new, non-obvious, and useful. But an overly narrow scope – like claiming the new pen structure as one with black ink – may make the patent economically ineffective since competitors arguably could copy the pen and fill it with blue ink. Meanwhile an overbroad claim – one that covers all writing instruments – will make the patent invalid if other writing instruments with that equivalent structure already exist. At the same time, the claim must be supported by an adequate description of what the invention is and how it works. Too little detail in the description may result in an invalid claim; too much detail could unnecessarily give away valuable trade secrets or even limit the scope of the claim.
This process of preparing and submitting a patent application – called prosecution – presents a complicated drafting problem. “It involves multiple layers of abstraction, dialogue with the inventor, and thinking defensively about how competitors will try to get around the patent,” said Professor Jason Rantanen, who teaches intellectual property law.
In the Patent Prosecution seminar, Matthew Warner-Blankenship, an attorney at the Des Moines office of Davis Brown, guides students through the process of preparing a patent application. Warner-Blankenship, who graduated from the Iowa College of Law in 2011, specializes in prosecuting patents for his clients in the medical devices and biotech industries.
last updated November 24, 2019
This drafting seminar focuses on patent application preparation and prosecution. Students will complete a series of graded drafting exercises and deliver presentations on advanced patent law topics. The seminar emphasizes the administrative rules and procedures governing practice before the U.S. Patent and Trademark Office, and is especially designed for students who plan to practice patent law. Patent law is a co-requisite.
Tuesday 5:30-7:30 pm