Festo A patent applicant's plague

Abstract

This paper highlights some of the intricacies and complexities associated with patent drafting, particularly in unpredictable sciences such as biotechnology. The paper draws on the new guidelines issued by the Patent Office regarding compliance with the 'utility' and 'written description' requirements of the Patent Statutes to illustrate some of the thorny issues applicants must thoughtfully consider during drafting as well as the pitfalls applicants will encounter when failing to do so. The paper then reviews the recent decision in Festo Corp. v Shoketsu Kinzoku Kogyo Kabushiki Co, Ltd to underscore how a lack of forethought can result in the issuance of claims that provide a compromised scope of protection.