Description

The more care taken during patent prosecution, the more likely the patent will be construed as the patentee desires and will withstand any challenges. A patent drafter's selection of even the smallest of words may significantly impact how a claim is construed. "A," the shortest word in the English language, amazingly causes so much trouble for a patent owner.

The use of "a" has proven problematic in patent prosecution. Does "a" mean "at least one," as KCJ Corp. v. Kinetic Concepts Inc., 223 F.3d 1351 (Fed. Cir. 2000) finds and Baldwin Graphic Sys. Inc. v. Siebert Inc., 512 F.3d 1338 (Fed. Cir. 2008)? Or does it mean one and only "one," as the Federal Circuit held in Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011) and Insituform Techs. Inc. v. CAT Contr. Inc., 99 F.3d 1098, 1106 (Fed. Cir. 1996)?

In the context of a non-patent statute, in the Supreme Court's recent 6-3 decision in Niz-Chavez v. Garland (2021), Justices Gorsuch and Kavanaugh devoted some 40 pages to dueling conclusions. The Supreme Court held "a" means one and only one based on the facts of Niz-Chavez and the statute.

Returning to the more familiar grounds of assessing the fundamental significance of claim construction to patentability, validity, and infringement determinations can put the spotlight on the importance of word selection, and in this case, the use of "a" in drafting the claims and specification of a patent application (does that mean "one and only one" application or at least one application?). The Federal Circuit has pointed out that it is the responsibility of the patent drafter to avoid textual sloppiness and resolve ambiguity.

Listen as our authoritative panel of patent attorneys establishes that the mighty word "a" can be dangerous to a patent owner and examines the impact of recent decisions addressing "a" and the implications on U.S. practice. The panel will offer best practices of fundamentally sound principles to prepare and prosecute a U.S. patent application to avoid careless claim terminology and untoward language in the specification.