The German Approach (Supplementary Reading)
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Inter Partes Re-Examination: a Low Cost Alternative to Litigation in The
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Inter partes Re-examination: a Low Cost Alternative to Litigation in the US and Prosecution Strategies in View of the Historically Low Allowance Rate at the by USPTO Anthony C. Tridico, and Carlos M. Téllez Los Lunes de Patentes, Madrid, 30 November 2009 Disclaimer • These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law. These materials reflect only the personal views of the panelists, are not individualized legal advice, and do not reflect the views of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., and the panelists cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., and the panelists. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed. 22 Outline • Re-exam as a low cost alternative to Litigation in the U.S. • Obviousness and KSR as major factors in rejection of applications • Strategies for dealing with KSR in various types of applications • General prosecution tips – If there is time – tips for avoiding inequitable conduct… 33 Monitoring and Detective Work • Time and money is spent monitoring your competitors. -
Patenting Life in the European Community: the Proposed Directive on the Legal Protection for Biotechnological Inventions
Fordham Intellectual Property, Media and Entertainment Law Journal Volume 4 Volume IV Number 2 Volume IV Book 2 Article 1 1993 Patenting Life in the European Community: The Proposed Directive on the Legal Protection for Biotechnological Inventions Janice McCoy Follow this and additional works at: https://ir.lawnet.fordham.edu/iplj Part of the Entertainment, Arts, and Sports Law Commons, and the Intellectual Property Law Commons Recommended Citation Janice McCoy, Patenting Life in the European Community: The Proposed Directive on the Legal Protection for Biotechnological Inventions, 4 Fordham Intell. Prop. Media & Ent. L.J. 501 (1993). Available at: https://ir.lawnet.fordham.edu/iplj/vol4/iss2/1 This Article is brought to you for free and open access by FLASH: The Fordham Law Archive of Scholarship and History. It has been accepted for inclusion in Fordham Intellectual Property, Media and Entertainment Law Journal by an authorized editor of FLASH: The Fordham Law Archive of Scholarship and History. For more information, please contact [email protected]. ARTICLES Patenting Life in the European Community: The Proposed Directive on the Legal Protection for Biotechnological Inventions Janice McCoy' INTRODUCTION Technology has once again overtaken the law. Ever since the United States Supreme Court concluded in 1980 that anything un- der the sun that was made by man could be patented,' and especial- ly since the United States Patent and Trademark Office ("USPTO") announced in 1987 that it considered nonnaturally occurring non- human animals to be patentable subject matter,2 legislative bodies in both the United States and the European Economic Community ("EEC") have been debating to what extent living matter should be patentable. -
Patents and the Public Domain: Improving Patent Quality Upon Reexamination
Patents and the Public Domain: Improving Patent Quality Upon Reexamination Prepared by Policy Intern Raeanne Young [email protected] May 2008 ELECTRONIC FRONTIER FOUNDATION eff.org Table of Contents EXECUTIVE SUMMARY ........................................................................................................................3 PATENTS AND THE PUBLIC DOMAIN .....................................................................................................4 The Problem With Patent Quality ..................................................................................................4 Policy Rationale: Encouraging Innovation .......................................................................................4 PATENT REEXAMINATION ...................................................................................................................6 Ex parte and Inter partes .............................................................................................................6 OVERALL REEXAMINATION TRENDS ......................................................................................................8 Ex Parte Reexamination Filing Data: July , 98 - December 3, 2007 ...............................................8 Inter Partes Reexamination Filing Data: November 29, 999 - December 3, 2007 .............................0 Comparison of Ex Parte and Inter Partes ......................................................................................0 PROMOTING FAIRNESS IN THE PATENT SYSTEM THROUGH REEXAMINATION .............................................2 -
Do Applicant Patent Citations Matter?
Do Applicant Patent Citations Matter? Christopher A. Cotropia Professor of Law University of Richmond School of Law Mark Lemley William H. Neukom Professor, Stanford Law School partner, Durie Tangri LLP. Bhaven Sampat1 Associate Professor, Mailman School of Public Health Columbia University 1 Corresponding author. 600 W 168th Street, New York, NY USA; [email protected]; Phone: 212-305- 7293 1 Do Applicant Patent Citations Matter? Abstract Patent law both imposes a duty on patent applicants to submit relevant prior art to the PTO and assumes that examiners use this information to determine an application's patentability. In this paper, we examine the validity of these assumptions by studying the use made of applicant-submitted prior art by delving into the actual prosecution process in over a thousand different cases. We find that patent examiners rarely use applicant-submitted art in their rejections to narrow patents, relying almost exclusively on prior art they find themselves. Our findings have implications for a number of important legal and policy disputes, including initiatives to improve patent quality and the strong presumption of validity the law grants issued patents—a presumption that makes patents more difficult to challenge in court. Keywords: Patents; citations; patent examination; bibliometrics Highlights: • Patent examiners rarely use applicant-submitted art to narrow claims before patents issue, relying almost exclusively on prior art they find themselves. • This is not simply because the applicants have drafted around the art they submitted. Nor does the explanation appear to be that applicant art is uniformly weak. • The findings have implications for a number of important legal and policy disputes, including initiatives to improve patent quality and the strong presumption of validity the law grants issued patents. -
Issues of Patentability
DIGITAL HEALTH ISSUES OF PATENTABILITY Recent changes in US patent law have made protecting and enforcing patents directed to digital healthcare inventions more challenging, as Marsha Gillentine and Michelle Holoubek of Sterne, Kessler, Goldstein & Fox explain. igital healthcare, the confluence of amount to “significantly more“ than the abstract medical and other biological fields idea, such that all uses in the abstract idea are not Dwith digital technology, is a vital part of pre-empted. patient treatment and healthcare management. Much of the confusion surrounding software- This article discusses five of the current top based claims is due to the first part of the test, intellectual property concerns for digital since there has been no guidance regarding how healthcare companies. to properly define an abstract idea. The Supreme Court explicitly declined to provide this guidance 1. Will the changes in US software in the Alice decision, and the federal circuit has WH[LU[SH^HќLJ[`V\Y07& not offered clear guidance on this point either. On June 19, 2014, the US Supreme Court issued What does this mean for patent applicants its decision in Alice Corp v CLS Bank, holding and owners? For starters, that a review of that computerised abstract patent ideas are not your existing IP may be needed to make sure patent-eligible. The post-Alice patent world has that no eligibility issues have arisen due to been filled with uncertainty and understandable the current (and retroactive) flux in the law. fears regarding the patent eligibility of software For new IP, additional details about specific patent claims. implementations, advantages that differentiate Digital healthcare companies have not your invention from the state of the art, and been spared this angst, since much of their examples may all be useful in mitigating innovation is protected by software patents eligibility challenges down the road. -
Can I Challenge My Competitor's Patent?
Check out Derek Fahey's new firm's website! CLICK HERE Can I Challenge My Competitor’s Patent? Yes, you can challenge a patent or patent publication. Before challenging a patent or patent publication, an analysis should be conducted by a registered patent attorney to determine if challenging a patent or patent publication is necessary, and to evaluate the legal grounds for challenging the patent or patent publication. As a registered patent attorney, I evaluate patents and patent applications to determine the risk of developing competing goods. Below are three important questions that must be answered by a registered patent attorney to evaluate the risk of competing against a patented good. 1. Does a particular good infringe on a patent? Typically, a registered patent attorney will conduct a “freedom to operate” opinion to determine if a business owner can commercialize a particular good without infringing on another’s patent. First, a patent attorney will determine if the patent is enforceable. Next, a patent attorney will perform an infringement analysis to determine if a particular good infringes on any of a patent’s claims. To perform an infringement analysis of a patent and a possibly infringing product, first, the patent’s scope must be analyzed. Second, the patent’s claim terms must be interrupted using the specification, prosecution history and extrinsic evidence to understand and construe the meaning of the claim terms. After the claim terms have been construed, then the elements of a particular good must be analyzed to determine if the particular good practices each and every claim element taught by a patent’s claim. -
1 the Future of the Equitable Doctrine of Equivalents in the United States
The Future of the Equitable Doctrine of Equivalents in the United States William O. Hennessey Professor of Law Franklin Pierce Law Center Concord, New Hampshire, USA Asia Pacific Economic Cooperation Intellectual Property Experts Group Symposium on IP Rights in the New Economy Taichung, Taiwan, July 19, 2001 “The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy.” Mr. Justice Brown Topliff v. Topliff 145 U.S. 156, 171 (1892) ”No plagiarist can excuse the wrong by showing how much of his work he did not pirate…” Judge Learned Hand Sheldon v. Metro-Golden Pictures 81 F.2d 49, 56 (2d Cir. 1936) 1. Introduction The court-created doctrine of equivalents, which has a long history in U.S. patent law, is about to be reconsidered by the U.S. Supreme Court.1 As most recently expressed by the Court in Warner-Jenkinson in 1997, “a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is ‘equivalence’ between the elements of the accused product or process and the claimed elements of the patented invention.”2 In reversing the lower Warner-Jenkinson decision of the Court of Appeals for the Federal Circuit [CAFC], the unanimous Supreme Court also stated that it would not deign to “micromanage” the “particular word-choice” 1 Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. A/k/a SMC Corporation and SMC Pneumatics, Inc., cert. -
Obviousness and the Doctrine of Equivalents in Patent Law: Striving for Objective Criteria
Catholic University Law Review Volume 43 Issue 2 Winter 1994 Article 7 1994 Obviousness and the Doctrine of Equivalents in Patent Law: Striving for Objective Criteria Stephen G. Kalinchak Follow this and additional works at: https://scholarship.law.edu/lawreview Recommended Citation Stephen G. Kalinchak, Obviousness and the Doctrine of Equivalents in Patent Law: Striving for Objective Criteria, 43 Cath. U. L. Rev. 577 (1994). Available at: https://scholarship.law.edu/lawreview/vol43/iss2/7 This Comments is brought to you for free and open access by CUA Law Scholarship Repository. It has been accepted for inclusion in Catholic University Law Review by an authorized editor of CUA Law Scholarship Repository. For more information, please contact [email protected]. OBVIOUSNESS AND THE DOCTRINE OF EQUIVALENTS IN PATENT LAW: STRIVING FOR OBJECTIVE CRITERIA The United States Constitution grants Congress the power to promote technological innovation by granting to inventors the exclusive right to their discoveries in the form of patents.' Congress has delegated the duty of granting patents to the Commissioner of the Patent and Trademark Office.2 The exclusionary right a patent provides' is effected through a civil action alleging infringement of the patent and seeking injunctive re- lief, damages, or both.' Patent law can be divided into two general procedural periods-the first relating to the procedure of procuring a patent from the Patent and Trademark Office, and the second relating to the enforcement of the in- ventor's right to exclude others from exploiting the patented invention.5 In the first period, the invention is fully described in an application con- taining a disclosure,6 followed by claims designed to outline precisely 1. -
Reconciling Patent Law's Doctrine of Equivalents with the FDA's Bioequivalence Requirement Janet Freilich
SMU Law Review Volume 66 | Issue 1 Article 3 2013 The aP radox of Legal Equivalents and Scientific Equivalence: Reconciling Patent Law's Doctrine of Equivalents with the FDA's Bioequivalence Requirement Janet Freilich Follow this and additional works at: https://scholar.smu.edu/smulr Part of the Law Commons Recommended Citation Janet Freilich, The Paradox of Legal Equivalents and Scientific Equivalence: Reconciling Patent Law's Doctrine of Equivalents with the FDA's Bioequivalence Requirement, 66 SMU L. Rev. 59 (2013) https://scholar.smu.edu/smulr/vol66/iss1/3 This Article is brought to you for free and open access by the Law Journals at SMU Scholar. It has been accepted for inclusion in SMU Law Review by an authorized administrator of SMU Scholar. For more information, please visit http://digitalrepository.smu.edu. THE PARADOX OF LEGAL EQUIVALENTS AND SCIENTIFIC EQUIVALENCE: RECONCILING PATENT LAW'S DOCTRINE OF EQUIVALENTS WITH THE FDA's BIOEQUIVALENCE REQUIREMENT Janet Freilich* ABSTRACT Contrary to popular perception, generic drugs often enter the market before the patents covering their brand name counterpartshave expired by making slight changes to the drug to avoid the brand name patent. These generics face a paradox: the U.S. Food and Drug Administration (FDA) requires that the generic "not show a significant difference" from the refer- ence product, while patent law requires that the generic have "substantial differences" as compared to the reference product. The generic must be bioequivalent, but not legally equivalent, to the brand name drug. This par- adox occurs frequently in the courts but has never been discussed in the literature. -
Ipq: Enhancing Your IP IQ
IpQ ENHANCING YOUR IP IQ TM Vol. IV, No.3 SPRING 2012 WHAT’S THE USE? A BRIEF BREAK Due to a patent infringement trial I first-chaired UNDERSTANDING METHOD VS. APPARATUS in Alabama and the DRI Business Litigation & USE INFRINGEMENT Intellectual Property Annual Seminar (I chair the Committee), IpQ took a brief break from publica- Every patent lawyer knows unauthorized use of a patent is infringement. Use, therefore, tion. I am happy to be back writing about IP quirks may sound simple enough, but it’s not. Just what does constitute infringing use may vary, and questions in IpQ. Thank you for your patience depending on whether a method/process or system/apparatus claim is involved. Plus, use during this hiatus, and keep those queries coming. may affect the damages a patent owner can recover. Savvy patent litigators must understand - Peter the sometimes-subtle differences to properly position a claim or defense. Statutory Infringement by “Use” KEY IDEAS: By statute, a patent owner has the “right to exclude others from making, using, offering for sale, or selling” a patented invention.1 As a consequence, 35 U.S.C. § 271(a) (2000) provides Statutory Infringement by “Use” ...............1 that, “[W]hoever without authority makes, uses, offers to sell, or sells any patented invention, Courts Define “Use”......................................1 within the United States or imports into the United States any patented invention during the term of the patent therefore, infringes the patent.” Meaning of “Use” Depends on Nature of Claim-in-Suit ................................................1 Courts Define “Use” Distinguishing Types of Patents ............2 Case law appears obvious: “[T]he use of a patented invention, without either manufacture or 2 “Use” Infringement of Method/Process sale, is actionable.” The statute does not define use, so its meaning has become a matter of 3 4 Patents ...........................................................2 judicial interpretation. -
Claim Drafting
Claim drafting Invention-Con 2019 Pre-Conference Session September 12, 2019 Overview • Questions to ask regarding your invention • Laws and required parts of a claim • Example Claims • One possible approach to drafting claims 3 Review information • Prior to writing claim(s) answer these questions: • What is the invention? • What are the elements that make up the invention? • How do the elements relate to one another? • Do you have more than one invention? • Tangible: Apparatus, machine, composition • Method: Making or Using • Are there multiple embodiments of the same invention? 4 What the law says • A nonprovisional patent application must have at least one claim particularly pointing out and distinctly defining the invention. • A claim may be written in independent or dependent form. • An independent claim is a standalone claim that contains all the limitations necessary to define an invention. • A dependent claim must refer to a claim previously set forth and must further limit that claim. 5 What the MPEP says • A claim in dependent form incorporates by reference all the limitations of the claim to which it refers. • Claims must be fully supported and enabled by the disclosure • Claims must be drafted as a single sentence • Claims should be arranged in order of scope so the first claim presented is the broadest • Consistent terminology should be used in both the patent disclosure and the claims 6 Claim(s) • Defines the invention and what aspects are legally enforceable • Must conform to the invention as set forth in the remainder of -
Problems and Solutions for Patent Law's Doctrine of Equivalents M
Louisiana Law Review Volume 64 | Number 1 Symposium on Harmless Error - Part II Fall 2003 Ambivalence in Equivalents: Problems and Solutions for Patent Law's Doctrine of Equivalents M. Aminthe Broussard Repository Citation M. Aminthe Broussard, Ambivalence in Equivalents: Problems and Solutions for Patent Law's Doctrine of Equivalents, 64 La. L. Rev. (2003) Available at: https://digitalcommons.law.lsu.edu/lalrev/vol64/iss1/9 This Comment is brought to you for free and open access by the Law Reviews and Journals at LSU Law Digital Commons. It has been accepted for inclusion in Louisiana Law Review by an authorized editor of LSU Law Digital Commons. For more information, please contact [email protected]. Ambivalence in Equivalents: Problems and Solutions for Patent Law's Doctrine of Equivalents INTRODUCTION In 1988, Horst Saalbach began a lawsuit involving the infringement of two patents owned by his Long Island robotics company, Festo Corporation. Today, after 15 years of continual litigation, including two trips to the United States Supreme Court, his case is still not resolved. In May of 2002, the Supreme Court issued its decision in Festo Corporationv. Shoketsu Kinzoku Kogyo Kabushiki Company, Limited' (known as SMC2), vacating a controversial Court of Appeals decision and remanding the case once again for further proceedings. Saalbach, a naturalized U.S. citizen who escaped communist East Germany when he was seventeen, continues this fight because of his belief in the principles of the Constitution.' He has the resources to persist because Festo Corporation is a $1.5 billion company with 10,000 employees worldwide.4 However, Festo represents perfectly a serious flaw in the patent system today.