Buzz Archive:
Is The Name Of The Game Still The Claim? The Post-Phillips Revolution In Patent Law

by Gerson S Panitch, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 11/27/2007

In 1990, Giles Rich, then Chief Judge of the Federal Circuit, proclaimed, "The name of the game is the claim." Indeed, more than a decade of precedent both before and after made clear that the scope of a patent rested primarily in the words of its numbered patent claims. Patent claims written narrowly were typically afforded limited protection. Broadly crafted claims regularly resulted in expansive patent protection.

Thus over the last three decades, experienced patent drafters honed the skill of crafting broadly worded claims to cover more than what a patent expressly describes. Companies invested their patenting dollars in elaborate claiming strategies, placing less emphasis on the technical description and background parts of their patent applications. There seemed little need to do otherwise. For the name of the game was truly the claim.

Then, two years ago, the winds abruptly began to shift with the Federal Circuit's decision in Phillips v. AWH. In the wake of that en banc decision, dozens of later decisions confirmed a revolution underway in patent law.

This week, Gerson S. Panitch of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP provides us with a detailed history and status report of where U.S. patent law now stands.