The Problem-Solution Approach

Patent prosecution is one of my sharpest skills, and I just got word of an important patent allowance for one of my biotech cases. The beauty of receiving this notice was compounded by the strategy and approach to getting this case out the door with allowable subject matter.

As my friends and colleagues know, I have worked extensively in biotechnology and pharma patent prosecution and litigation. But in recent years, the courts have made life in biotech patenting very difficult under “Section 101” jurisprudence. The US Supreme Court has recently found that patents covering DNA may be unpatentable because the information content in DNA is “naturally occurring.” It has long been held that laws of nature, natural phenomena, and abstract ideas are not patentable under Sec. 101, so this is a real problem and has made patents in this area challenging (but not impossible).

In the patent application I’m discussing, owned by a major academic institution, the examiner made these Sec. 101 rejections, even though the technology is very innovative and potentially life-saving. The patent prosecution, in this case, had been going for about five years (!), and I’ve been on the case for over three years. The inventors have a portfolio of four patent families pertaining to crystallization and expression of proteins. 

To address the patent office rejections in this case, I needed to take this prosecution to another level. Using a premium patent data tool that our firm subscribes to, I looked at about twenty recent patent applications that were allowed, and a few that were not. I came up with an evidence-based analysis of previous cases:

1. The attorneys who responded to Section 101 rejections by clearly explaining the problem that prompted the invention were the ones getting allowances.

2. Those attorneys that used a more conventional approach by beginning with their arguments were not getting patent allowances.

So I adopted a problem-solution approach, in which my arguments begin with a clear discussion of the problem the invention addresses, and then discussing how the invention and proposed claims solve the problem. This is more than merely explaining how this invention is better, more efficient, less expensive, faster, and easier to use than the prior art. These arguments, while important, are critically intertwined with the problem we are solving. 

Since using a problem-solution approach in this case, I’ve had the opportunity to use this same approach with several other patent applications in the biotech and pharma industries and have already had similar successes.

This story is just one instance of the value that an experienced patent attorney gives to his or her clients. Clients want to see results. We have many competitive advantages, and one of them is getting solid results. 

So when choosing a patent attorney, it is important to ask the right questions:

•Do they read current case law?

•Do they have the educational background to employ scientific analysis?

•Do they know what works, and what does not, to get patents allowed and issued? 

At Counsel for Creatives, we are versed in recent decisions from the United States Patent and Trademark Office, the Trademark Trial and Appeal Board, and the federal judiciary. We often communicate with other experienced practitioners to learn what they are doing and how it is working for them so we can use these techniques for our clients, too — and we are able to use scientific analysis to help your case. Contact us to learn more. 


Andrew H. Berks
Direct: 646-797-2952
Mobile: 845-558-7245
Skype: andrew_berks
aberks@counsel4creatives.com