Innovation Snapshots
These short pieces present practical observations on invention development, patent strategy, and related topics. They are intended to highlight specific issues that arise in practice and to provide concise perspectives rather than comprehensive treatment. Each snapshot focuses on a particular point that may be relevant in the course of developing inventions, evaluating patentability, or managing intellectual property.
Patent Strategy for Innovation Development
These Snapshots address key strategic questions in developing and protecting new inventions, including patentability, timing, and freedom to operate.
• Improving Patentability Before Filing
• Patentability and Marketability Are Different Questions
• What Features of an Invention Drive Commercial Value?
• What Is a Knock‑Out Patentability Search?
• When Should Patent Counsel Be Involved?
• When Should I File a Patent Application?
• What Is an Intellectual Property Strategy?
• Should You Use In‑House or Outside Patent Counsel?
Patent Procedures and Filing Strategies
These Snapshots explain the different types of patent applications and how to choose among them as part of an overall filing strategy.
• What Are the Different Types of Patent Applications?
• Provisional vs. Non‑Provisional Patent Applications
• Continuation, Divisional, and CIP Applications
• How Do I Get Patent Protection in Foreign Countries?
• Reissue and Reexamination Applications in the Correction of Patents
• What Happens After You File a Patent Application?
Patentability and Patent Prosecution
This section describes the fundamental legal and procedural framework governing the examination of patent applications in the United States. It explains how patentability is determined through the patent prosecution process, including the roles of patent eligibility, novelty, non-obviousness, and disclosure requirements, as well as the interaction between applicants and examiners during examination.
Patentability and Patent Prosecution
Patent Eligibility: What Types of Inventions Can Be Patented?
Novelty: The Requirement That an Invention Be New
Non-Obviousness: When an Invention Is Not Patentable Despite Being New
Disclosure Requirements: Written Description, Enablement, and Best Mode
Additional Requirements: Utility and Double Patenting
Responding to Office Actions: How Patent Claims Are Shaped
Special Problems in Chemistry and Biotechnology
Although the United States has a single body of patent law, the manner in which that law is applied often depends on the characteristics of the underlying technology. Certain issues arise with particular frequency in fields such as chemistry and biotechnology, reflecting differences in predictability, the nature of the subject matter, and the way inventions are developed and understood.
In the Snapshots that follow, we consider a number of these issues. Some are common to both chemistry and biotechnology, although they may arise in different forms in each field. Others are more closely associated with one field or the other. Together, these topics illustrate how the general requirements of patentability are applied in practice within the life sciences.
Patenting Biotechnology Inventions: How Much Data Is Enough?
Patent Eligibility in Biotechnology: Diagnostic Methods and Natural Phenomena
Written Description and Enablement in Biotechnology: The Role of Deposits
Sequence-Based Disclosure in Biotechnology
Functional Claiming in Biotechnology
Species and Genus Claims in Biotechnology and Chemistry
Antibody and Protein Patent Claims in Biotechnology
Patenting Antibodies: Why Structure Matters
Novelty in Chemistry: Inherency and Accidental Anticipation
Structural Obviousness in Chemistry
Selection Inventions and the Interpretation of Ranges in Chemistry