JUDGE PAUL MICHEL'S TOP TEN DRAFTING TIPS

At the Newport Beach Seminar three eminent Judges from different US Courts gave their views on how Patent practitioners could improve their presentation of claims before their Court. Judge Paul Michel of the CAFC provided a list of ten points that he considered should be followed in preparing patent applications. These tips are produced below, as recorded on the fly and therefore with no guarantee of accuracy:-

1. Make sure there is support for the claims; track the language used in the claim back to the specific description to ensure the same terminology is used.
   
   
2. Check whether the term used has an established meaning in the art and whether that meaning is appropriate in the particular circumstances in which it is to be used.
   
   
3. Avoid amendment during prosecution!
   
   
4. Prosecute the claims for literal, not equivalent, scope.
   
   
5. Know the Federal Court case law on construction. Look at the decision as a whole, not just a stray phrase, and read all the cases.
   
   
6. Where there is more than one possible meaning for a term, and in the absence of other factors, the customary meaning in the art is more relevant than the ordinary meaning.
   
   
7. Dictionaries relevant to the art are a prime source for ascertaining the appropriate meaning of the term.
   
   
8. When listing and discussing prior art references, check that the art uses a term in the same manner as in the specification and describe the art using terminology consistent with that used to describe the embodiments..
   
   
9. Describe multiple embodiments wherever possible.
   
   
10. Avoid creating a prosecution history except where you wish to establish a broader interpretation than might be the customary interpretation.