Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent Prosecution

Supreme Court Affirms Patent Validity Presumption Standard

by

Posted in Patent

On June 20, 2011

In a unanimous 8-0 concurrence (CJ Roberts took no part), Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S. (2011) (Decided June 9, 2011), the Supreme Court approved the Court of Appeal for the Federal Circuit’s long standing rule that clear and convincing evidence is required to prove a patent invalid. In unequivocal language, the Court held that 35 U.S.C. § 282 “requires an invalidity defense to be proved by clear and convincing evidence.” Slip Op. at 1.

Direct Infringement Liability May Be Possible Without Possession of All the Claimed Elements

by

Posted in Patent

On March 10, 2011

Following a recent Federal Circuit decision, a patentee might now be able to assert a system claim against a single infringer for operating a distributed system, rather than naming joint infringers hosting portions of the distributed system. This is significant for entities that do business on-line, particularly enterprises with a cloud computing business model. Whereas in the past a patentee may have had to allege direct infringement among joint infringers (e.g., individual users, enterprises, and information technology system providers), and perhaps prove vicarious liability, now it may be possible to bring a direct infringement action against a sole infringer that might not be in possession of the complete system. E-commerce businesses, web-based providers of business services, providers of software as a service, electronic market makers, and other enterprises that use third-party server farms to host part, or all, of their system might now be named as the sole infringer. A patentee could perhaps now sue a competitor for infringement without having to sue the infringer’s IT provider. This could be particularly advantageous in cases where the patentee and the infringer share providers, and will permit the patentee to sue without jeopardizing its own business relationship with the provider.

U.S. Patent & Trademark Office Circulates Supplementary Patent Examination Guidelines Regarding Definiteness of Claim Language

by

Posted in Patent

On February 17, 2011

On February 9, 2011, the U.S. Patent & Trademark Office (USPTO) issued Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. § 112 and for Treatment of Related Issues in Patent Applications (the “Guidelines”). The Guidelines have immediate effect, but the USPTO will consider written comments received by April 11, 2011. Part 1 of the Guidelines pertains to the provisions of 35 U.S.C. § 112, 2 regarding claim definiteness, while Part 2 of the Guidelines pertains to the examination of so-called “computer-implemented functional claim limitations.”

New Patent Quality Examination Metrics Attempt Greater Balance

by

Posted in Patent / USPTO

On November 1, 2010

On October 7, 2010, the U.S. Patent & Trademark Office (USPTO) issued a press release announcing the adoption of new procedures for measuring the quality of patent examination that will be implemented during the start of the 2011 fiscal year. After requesting public comment in both the Federal Register and Official Gazette and holding two round table discussions, a joint USPTO-Patent Public Advisory Committee (PPAC) Task Force developed a new composite quality metric including seven factors, and an associated procedure for obtaining measurements, identifying systemic problems and providing remediation through examiner training.

Former Judge Paul Michel Discusses Proposed Changes to US Patent System

by

Posted in Patent / USPTO

On July 23, 2010

“Congress Needs to Act” is the first article published by Judge Paul R. Michel since his retirement from the Federal Circuit, where he served as the Chief Judge. Judge Michel’s below speech was given on July 21, 2010, at the Global Intellectual Property Center of the U.S. Chamber of Commerce, providing commentary on the current state of the nation’s patent system and how the system can be improved to bolster US economic growth.

USPTO Recognizes That One Size Does Not Fit All

by

Posted in USPTO

On July 6, 2010

The United States Patent and Trademark Office (USPTO), in an attempt to offer patent applicants more choices, recently proposed establishing a three-tiered examination system. Under the current system, with the exception of accelerated examination and those cases granted “special” status, all non-provisional patent applications go into the same queue for examination and are taken up in due course. Under the new proposal, an applicant would be able to choose either prioritized examination (Tier I), traditional examination (Tier II) or delayed examination (Tier III).

12-Month Extension to the Provisional Patent Application Period – Buying More Time to Commercialize Your Invention

by

Posted in Patent / USPTO

On April 22, 2010

On April 2, 2010, the USPTO issued a press release and published in the Federal Register a request for comment on a proposed change that would effectively give applicants a 12-month extension to the current provisional application period. Under the current rules, an applicant must file a nonprovisional application within 12-months after the filing of a provisional application pursuant to 35 U.S.C. § 119(e) and must thereafter complete any missing parts to that application within a time period of up to a maximum of seven months.

The Written Description Requirements of 35 U.S.C. §112 and Ariad Pharms. Inc. v. Eli Lilly & Co.

by

Posted in Patent / Pharmaceuticals

On February 24, 2010

Recently certain members of the patent law bar have expressed surprise that the Federal Circuit has used the written description requirements of 35 U.S.C. §112, first paragraph to invalidate patents such as the University of California’s patent directed to insulin in Regents of the University of California v. Eli Lilly & Co., and Genentech’s patent directed to production of human growth hormone in Genentech, Inc. v. Novo Nordisk A/S. This issue has come to the forefront again in Ariad’s pending per curiam appeal from the Federal Circuit decision in Ariad Pharms., Inc. v. Eli Lilly & Co., vacated and rehearing en banc granted. Oral argument in the case was held on December 7, 2009. In the case under appeal, the Ariad patent was held not to meet the written description requirements of 35 U.S.C. §112, first paragraph.

Duty of Disclosure: Applicant’s Contradictory Statements to EPO and USPTO Support Finding of Inequitable Conduct

by

Posted in Patent / USPTO

On February 12, 2010

The Federal Circuit’s recent decision in Therasense, Inc. v. Becton, Dickinson & Co., No. 2008-1511 (Fed. Cir. Jan. 25, 2010) held that applicant’s statements made in proceedings before foreign patent offices may be required disclosures in prosecution before the USPTO (“PTO”), particularly when those statements directly contradict other statements made during prosecution. From the court’s holding: “An applicant’s earlier statements about prior art, especially one’s own prior art, are material to the PTO when those statements directly contradict the applicant’s position regarding that prior art in the PTO.”

USPTO and Practitioners Discuss Disclosures from Similar Applications

by

Posted in Patent / USPTO

On January 6, 2010

During a recent AIPLA-sponsored discussion at the USPTO, patent practitioners met with heads of various Technology Centers to discuss USPTO caseloads and recent events. One of the more interesting topics was the increasing number of disclosures from applicants in light of McKesson and more recent inequitable conduct cases and measures that may be taken by the USPTO and practitioners in response.

Connect:

About Gibbons

With 200 attorneys, Gibbons is a leading law firm in New Jersey, New York, Pennsylvania, Delaware, Washington, DC, and Florida, ranked among the nation’s top 200 by The American Lawyer. More…

Subscribe

Archived Blog Posts

Categories