Use of Reference Numerals in Patent Specifications
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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. -
Constructing Design Patent Map and Design Strategy Based on Two Perspective of Classifying Methodology
Constructing Design Patent Map and Design Strategy Based on Two Perspective of Classifying Methodology Chia-Han Yang* * Institute of Creative Industries Design, National Cheng Kung University, Taiwan [email protected] Abstract: The design patent is considered less definite than other patent categories such as invention and utility model patent, so it is relatively difficult to create a design patent map for design strategy planning. This research adopts two perspectives of classifying methodology to construct innovative design patent mapping using multivariate analysis such as Multidimensional Scaling (MDS) method and cluster analysis. Thirty-eight chair design patents in Taiwan are selected as analytical cases for patent mapping. The findings reveal that the two design patent maps based on MDS method and cluster analysis both show similar design category. The comparable study also depicts the MDS-based design patent map is better in external environmental monitoring such as design trend analysis, selection of design hot zone, design forecasting, and evaluation the design strategy from major competitors. The cluster-based design patent map is useful to understand the design features of existing patent, especially in the current dominant design and new design focus in the context of aesthetic, functional, creative and experience value. Key words: Design patent, Patent map, Design strategy, Multidimensional scaling, Cluster analysis 1. Introduction With design knowledge evolving dynamically and proliferating globally, product and industrial design is becoming a more innovative approach wherein the integration of system knowledge is pivotal in accelerate design-driven innovation and expand markets for the new users. Under this competitive environment, some discussions shed light on the constructing design strategies for new product development and design resource planning. -
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 -
The Supreme Court of Canada First Wrestled with the Patentability Of
SCHMEISERV. MONSANTO 553 SCHMEISER V. MONSANTO: A CASE COMMENT EDWARD (TED) Y00 AND ROBERT BOTHWELL• I. INTRODUCTION The SupremeCourt of Canada first wrestledwith the patentabilityof higher life forms in the Harvard mouse case.1 Their decision to refuse patents claiming genetically modified animals, and by extensionplants, was a major disappointmentto many in the biotechnology industryin Canada. Canadastood alone amongstits GS partnersas the onejurisdiction where such patents could not be obtained. Dire predictions about the future of biotechnology research and developmentin Canada were made. Whenthe SupremeCourt granted leave to appeal2to Mr. Schmeiserin his legal battle with industry giant Monsanto, it was thought by many that the rights of patentees could take another blow, and further set back Canada's growing biotech industry. Others more optimisticallybelieved that the SupremeCourt had an opportunityto expand patent rights in the biotech field. 2004 CanLIIDocs 149 II. FACTS The respondents, Monsanto Company and Monsanto Canada Inc., are the owner and Iicensee respectively of a patent titled"G lyphosate-ResistantPlants." The patent was granted in 1993 and is directed to a chimeric3 gene that confers upon canola plants resistance to glyphosate-basedherbicides. The resulting plant is named "Roundup Ready Canola" by Monsanto, referring to the resistance demonstrated by the modified canola plant towards Monsanto'sown glyphosate-basedherbicide "Roundup." Monsanto licenses its Roundup Ready Canola to farmers for a fee, provided they sign a Technology Use Agreement(TUA), which entitles the farmer to purchase Roundup Ready Canola from an authorized Monsanto agent. The TUA restricts the farmer from using the seed to plant more than one crop and requires the crop to be sold only for consumptionto a commercialpurchaser authorized by Monsanto.The farmer is also prohibited from selling or givingthe seed to a third party. -
The Scope of Protection of Patent Claims in Europe and the UPC Paul England*
Journal of Intellectual Property Law & Practice, 2016, Vol. 11, No. 9 ARTICLE 689 The scope of protection of patent claims in Europe and the UPC Paul England* Article 69 of the European Patent Convention (EPC) The author states that the extent of the protection conferred by a Paul England is a senior associate and PSL at Taylor European patent or a European patent application shall Wessing. He is the editor of the forthcoming book be determined by the terms of the claims, using the de- UPC: A Practitioners’ Guide to the New European scription and the drawings to interpret the claims. Patent Litigation System (Hart Publishing, 2016) and Article 69 is to be interpreted according to the Protocol the consulting editor of Intellectual Property in the Downloaded from on Interpretation of Article 69 of the EPC (the Life Sciences (Globe Law and Business, 2015). ‘Protocol’). Article 1 of the Protocol states: This article Article 69 should not be interpreted in the sense that the ex- tent of the protection conferred by a European Patent is to Article 69 of the European Patent Convention links be understood as that defined by the strict, literal meaning of the scope of protection conferred by a patent to its http://jiplp.oxfordjournals.org/ the wording used in the claims, the description and drawings claims. The Protocol on Interpretation of Article 69 being employed only for the purpose of resolving an ambigu- EPC clarifies that courts should interpret the claims ity found in the claims. Neither should it be interpreted in adopting an approach that combines a fair protec- the sense that the claims serve only as a guideline and that tion for the patentee with a reasonable degree of the actual protection conferred may extend to what, from a certainty for third parties. -
Intellectual Property & Patent Research Services W W W . I P
Intellectual Property & Patent Research Services ? Patent Searching ? Patent Drawings / Illustrations ? Patent Application Drafting ? Patent Watching /Alerts ? Patent Landscaping ? Trademark Searching w w w . i p . d e x t r a s y s . c o m Dextrasys Technologies Private Limited, Trichy, INDIA Contents Presenting Dextrasys 3 Patent Searching 4 Patent Drawing 6 Trademark Searching 7 Information Security 8 Why Dextrasys 9 Contact Us 10 w w w . i p . d e x t r a s y s . c o m 3 Presenting Dextrasys I have great pleasure in presenting Dextrasys (www.ip.dextrasys.com). We, at Dextrasys, provide Intellectual Property and Patent Search services to business and professional customers that include business organizations, law firms, patent attorneys and patent agents in US and Europe. We provide high quality, fast turn around Patent Searches including Patentability, Invalidity, FTO and State of the Art searches. In addition to Patent Searches, we provide Patent Drawings, Trademark Searches and Legal Documentation Services. Our prime objective is to help clients like you to improve productivity, quality and cost of service by ? Consistently exceeding your expectations in delivery ? Delivering on-time with quality and cost benefits ? To change the way our clients acquire, manage and deliver Knowledge We are a team of enthusiastic researchers with strong domain expertise in mechanical, electrical, electronics, chemistry, pharmaceuticals and life sciences. We look forward to assist you in patent searching and related IP activities. We are confident, you will be excited with the quality of our deliverables and level of service. Muthukumar Ramalingam Founding Director & CEO [email protected] w w w .