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Category Archives: Patents

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Expediting patent examination in the United States

Posted in Intellectual Property, Patents

Though the U.S. Patent and Trademark Office (USPTO) has reduced patent prosecution time a bit during the past five years, it still takes, on average, at least 18 months before the patent examiner acts upon an application. Throw in two or more office actions, and the average pendency of a patent application is more than three years from the filing date to either issuance or abandonment. However, a number of programs are available that can significantly reduce prosecution time.

Track One prioritized examination (PE) was introduced in September 2011 and provides expedited examination of a patent application for an additional fee. Though the additional fee is $4,140 ($2,070 for small entities), examination is significantly compressed. On average, PE results in either a notice of allowance or a final rejection in about seven months. Applicants must request PE at the time the application is filed, or at the time a request for continued examination (RCE) is filed.1

Accelerated examination (AE) also continues to be available, but is generally less desirable than prioritized examination. An AE petition only requires an additional fee of $140, but the other requirements are burdensome. In particular, the applicant must not only conduct a patentabilty search before filing the application, but also submit an Examination Support Document (ESD). The ESD must identify where each claim limitation is supported in the specification and describe how each claim is patentable over the closest prior art — including identifying any claim limitations that are disclosed in the prior art. As …

The saga of strict de novo review of patent claim construction comes to an end — U.S. Supreme Court tweaks the standard of appellate review

Posted in Intellectual Property, Patents

As we reported last year, one of the issues that has divided the U.S. Court of Appeals for the Federal Circuit (the CAFC) for nearly 20 years is the proper standard of appellate review of patent claim construction rulings. No less than four CAFC en banc decisions addressed the issue. In each instance, the majority applied a strict de novo standard for appellate review with no deference to the trial court even with regard to underlying factual determinations, while vigorous dissents objected to this standard.

The dissenters have been vindicated, as the Supreme Court has now held that a trial court’s underlying factual determinations with respect to extrinsic evidence used in patent claim constructions must be reviewed on appeal under the clearly erroneous standard. This decision should, at least in theory, result in an increase in claim construction affirmances by the CAFC. It remains to be seen, however, whether there will be a significant increase.

Patent claim construction basics1

The scope of a patent is defined by its claims, and construing those claims is the heart and soul of nearly all patent litigation. The meaning of the words and phrases used in the claims  is critical to not only the question of infringement, but also patent validity.

The task of construing the meaning of patent claims is a question of law for the court — not a jury — to decide. Markman v. Westview Instruments, Inc., 517 U.S. 370, 390-91 (1996). Claim terms are given their ordinary and customary …

Life sciences patent subject matter eligibility — two steps forward, one step back

Posted in Intellectual Property, Patents

The U.S. Patent and Trademark Office (USPTO) released its revised Interim Guidance on Patent Subject Matter Eligibility under 35 U.S.C. 101 on Dec. 16, 2014. For the life sciences industry, the revised guidance provides significant relief from the previous guidance released March 4, 2014. However, just one day later, the joy that many life science patent practitioners felt from the revised guidance was tempered when the Court of Appeals for the Federal Circuit affirmed a district court’s holding of invalidity of several patent claims of Myriad Genetics based on patent subject matter ineligibility.

The good news

The revised guidance still employs a three-step analysis to determine subject matter eligibility, but has several notable changes. The first step of the analysis still questions if the claim is to a process, machine, manufacture or composition of matter as required by Section 101. However, the second step of the analysis questions if the claim is “directed to” a judicial exception, rather than the previous “involving” a judicial exception. As an example, the revised guidance notes that process claims that merely use a nature-based product are not necessarily subject to the analysis. Additionally, all claims — i.e., both products and processes — are subject to the same analysis.

Further, if a claim is identified as directed to a “product of nature” exception, the analysis compares the nature-based product to its naturally occurring counterpart to identify “markedly different” characteristics based on structure, function or properties. Only if there is no markedly different characteristic does the …

‘Patent troll’ cannot “derail” FTC investigation

Posted in Patents

Have to give them an “A” for effort. “Patent troll” MPHJ Technology Investments, LLC sued the FTC hoping to shut down its investigation into the company because the investigation violated MPHJ’s First Amendment rights to petition. A West Texas federal judge recently ruled that MPHJ could not “derail” the FTC investigation with such a claim.

MPHJ, which had bought a number of patents related to computer scanning programs, mailed demand letters in an effort to license its patents to various companies that were already using similar technology. But MPHJ didn’t stop there. Many of the letters also threatened to sue those same companies if they didn’t sign license agreements and pay MPHJ’s demanded licensing fees. Those inquiry letters landed MPHJ in hot water with the attorneys general of various states, including Vermont and Nebraska—and with the FTC. Specifically, the FTC is investigating whether the inquiry letters violated Section 5 of the FTC Act. The FTC has already offered to settle the matter with MPHJ via a consent judgment, but MPHJ rejected the offer, leaving the investigation open and pending. Indeed, the Commissioners have yet to make a final decision about bringing any enforcement action at all, which would be accomplished by a majority vote.…

Ready. Set. Go. FTC patent troll study cleared for takeoff

Posted in Intellectual Property, Patents

Last week, the White House’s Office of Management and Budget approved the FTC’s request to study how patent assertion entities (PAEs or, less charitably, patent trolls) operate and to what extent they affect competition and innovation. The study was originally proposed in September 2013 and modified this past May in response to public comment.

As we described previously in a two-part series of articles (read part 1 and part 2), the study will be conducted in two segments and is designed to answer the following questions:

  • How do PAEs organize their corporate legal structure, including parents, subsidiaries, and affiliates?
  • What types of patents do PAEs hold and how do they organize their holdings?
  • How do PAEs acquire patents; who are the prior patent owners; and how do they compensate prior patent owners?
  • How do PAEs engage in assertion activity (i.e., how do they behave with respect to demands, litigation, and licensing)?
  • What does assertion activity cost PAEs?
  • What do PAEs earn through assertion activity?
  • How does PAE patent assertion behavior compare to that of other entities that assert patents?

A new Ohio weapon against patent trolls?

Posted in Intellectual Property, Patents

Ohio may become the next state — after Virginia, Georgia, and thirteen other states — to take on the fight against patent trolls. A bill pending in Ohio’s General Assembly, H.B. 573, would provide additional tools to thwart abusive tactics by patent trolls. But how useful those tools may prove in the battle against the problems they are intended to remedy is yet to be seen.

“Patent troll” is a pejorative term without a well-defined meaning. It is widely used to describe an entity that does not make or sell any products or services, but acquires patents from others and then seeks to exact licensing fees through abusive tactics, including meritless assertions of patent infringement. Because defending against patent infringement claims can be an expensive endeavor, those targeted by meritless lawsuits often opt to pay patent trolls’ relatively low demands rather than aggressively defend against the claims in court. It is a decision that can leave business leaders steaming because, in their view, their companies are essentially being subjected to a shake-down by the threat of a meritless lawsuit.

In addition to frustrating business leaders, abusive practices in enforcing patents can stymie the economy. When companies are forced to settle meritless claims of infringement, they have less to spend on payroll, research and development, and other expenses that add value to the company and make it more likely to contribute to a thriving economy. Thus, patent trolls (as defined above) harm their targets, but they also negatively impact society more …

Exceptional vs. stand out … patent trolls lose adjective war in the Supreme Court

Posted in Intellectual Property, Patents

The Supreme Court issued two decisions Tuesday that will no doubt have interesting consequences for patent trolls and businesses that have been the target of patent trolls.

Non-practicing entities (NPEs) are companies that do not sell a product or service, but instead acquire patents for the purpose of monetization by way of licensing and/or suing for patent infringement. “Patent troll” is a derogatory term for NPEs, which assert patents of questionable validity or scope against businesses, typically requesting a licensing fee that is high, but less than the cost of defending a patent infringement lawsuit, effectively backing the businesses into a corner and requiring them to pay licensing fees to avoid the even higher cost of infringement litigation.

The Patent Act provides that a “court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. §285. Tuesday’s decisions should make it easier for a prevailing business that is unsuccessfully sued for patent infringement by a patent troll to recover the cost of litigation from the accusing patent troll, no doubt making a patent troll think twice about bringing litigation when it does not have a good likelihood of winning.…

De novo review redux — Supreme Court to consider standard of appellate review of patent claim construction

Posted in Intellectual Property, Patents

In a recent blog post, we reported that a divided U.S. Court of Appeals for the Federal Circuit (CAFC) had reaffirmed that appellate review of patent claim interpretations is de novo, without any deference to the trial court even for factual matters. As we stated in that post, the 6-4 en banc decision by the CAFC in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp.,1 appeared to be an open invitation for the U.S. Supreme Court to take up the issue.

The Supreme Court has now accepted that invitation, albeit with a difference dance partner. On March 31, 2014, the Supreme Court granted certiorari in Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., on the following issue:

Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.…

It’s déjà vu all over again — fractured Federal Circuit holds tight on strict de novo review of patent claim construction

Posted in Intellectual Property, Patents

The U.S. Court of Appeals for the Federal Circuit (CAFC) has once again reaffirmed that appellate review of patent claim interpretations is de novo, without deference to the trial court even for factual matters.1 The 6-4 en banc decision in Lighting Ballast Control LLC v. Philips Electronics N.A. Corp.,2 by the only appellate court having a say on patent matters, would appear to be an open invitation for the U.S. Supreme Court to finally take up the issue.

The importance of the patent claims

The scope of a patent is defined by its claims (which are found at the end of the patent). Accordingly, they are the most significant part of the entire patent instrument. Patent claims are simply collections of words, carefully crafted to encompass as much subject matter as possible while simultaneously distinguishing all prior art (to withstand a validity attack). But, because of the inherent limitations of words, one or more terms in a patent claim usually has multiple possible interpretations, and the “correct” meaning of a word or phrase depends on the context in which it is used. Further complicating matters is the fact that patent claims sometimes employ highly technical terminology that is not only amenable to more than one interpretation, but also may require guidance from experts for a court to ascertain the “correct” meaning.

Claim interpretation is the heart and soul of nearly all patent disputes. The meaning of the words and phrases used in the claims — which define the scope of …

Term for U.S. design patents is now 15 years

Posted in Intellectual Property, Patents

You may have just recovered from all the patent law changes that have occurred since passage of the America Invents Act (AIA) a couple of years ago, but we now have a new wave of changes prompted by the Patent Law Treaties Implementation Act of 2012 (PLTIA), which became effective Dec.18, 2013. The PLTIA implements both the Patent Law Treaty and the Hague Agreement Concerning the International Deposit of Industrial Designs.

The PLTIA changes the term for U.S. design patents from 14 years after issuance to 15 years after issuance for all design patents granted from applications filed on or after Dec. 18, 2013. Design patents continue to have no requirement for maintenance fees, and the term for utility patents remains 20 years from the earliest U.S. filing date. You may recall that a design patent covers the ornamental design of an article of manufacture, such as product shape, while a utility patent covers useful, functional features of a process, machine, article of manufacture, or composition of matter.

This change is of particular interest to entities in the technology industry because design patents have increasingly become a focus of their IP protection activities in recent years. This surge in interest was at least partly prompted by the “smartphone patent wars” in which Apple Inc. obtained a judgment of more than $1 billion (later reduced to $290 million) in damages against Samsung Electronics Co., Ltd. for patent infringement of both U.S. utility and design patents. The …

The next big fight: 3D printing and intellectual property

Posted in Copyright, Intellectual Property, Patents, Trademarks

Its time for our ink jet printers to move aside and begin to collect dust because there is a new kid in town: 3D printers. 3D printers are not technically “new” technology; they have been used by engineers since the 1980s. However, they are new to everyday consumers, and they threaten to become mainstream in 2014. This technology was mentioned in the President’s 2013 State of the Union speech, and even the cast of “Grey’s Anatomy” has been fighting over their 3D printer to build new life-saving organs. It is a hot topic and technology beginning to permeate news media and our everyday lives.

Our classic printers read information from digital documents and print the formatted text in ink, line by line, onto paper. A 3D printer, however, interprets CAD, or computer aided design, files — similar to a blueprint. These blueprints allow the 3D printers to “print” by building objects up layer-by-layer out of plastic, metal or other materials. This method of manufacturing allows for the elimination of older techniques such as injection molding.

This new technology has the promise to allow anyone to create almost anything wherever and whenever they want. Examples include the production of replacement parts for appliances, tools, medical prosthetics and potentially building biological organs out of organic material. One of the major patents protecting a specific type of 3D printer expired this week. The cost of 3D printers have decreased steadily due to the expiration of such patents on the 3D printers themselves. …

Timely filing of patent applications: Lessons learned from Michael Jackson and Smooth Criminal

Posted in Intellectual Property, Patents

The U.S. Patent Act provides that an inventor is barred from obtaining patent rights for an invention, and the invention goes into the public domain, when a patent application is not filed within one year of certain activities of the inventor that make the invention available to the public. This is often referred to as the “one year grace period.” Many inventors are unaware of or forget about this time limitation and mistakenly lose rights to their inventions.

Did you know that the pop icon Michael Jackson was an inventor? Michael created a gravity defying dance move often referred to as the “anti-gravity lean,” in which he has both feet on the floor and leans forward nearly 45 degrees in a gravity-defying manner. This lean first appeared in the 1987 music video (see the 7:15 mark) for the song “Smooth Criminal.” The lean again appeared in the 1988 short film (see the 8:20 mark) titled “Moonwalker” during the song Smooth Criminal. Michael first performed the song and the dance move live on stage during the second leg of his 1988-1989 Bad World Tour which began in February 1988.

The anti-gravity lean was performed with wires during the music videos but these wires could not be adequately hidden from view during live performances. To accomplish this dance move on live stage, Michael developed a system where pins were embedded into the stage floor and at the right moment special shoes with ankle support and grooves in the …

Patent troll moves forward with antitrust claim against defensive anti-troll

Posted in Intellectual Property, Patents

Can a group of defendants refuse to settle with a non-practicing entity (NPE)? Can they collectively refuse to license patents from a “troll”? Or does that refusal subject them to antitrust scrutiny? These are the issues at the heart of a Northern District of California case: Cascades Computer Innovation LLC v. RPX Corp.

Cascades manages a portfolio of patents and filed suit against a number of large technology companies for infringement. Those companies are members of RPX Corporation (RPX), a defensive patent aggregator formed to protect its members from NPEs who file infringement claims. When RPX, on behalf of its members, failed to reach a licensing agreement with Cascade, Cascade sued RPX and its members — including Dell, HTC, LG, Motorola and Samsung — claiming that defendants’ alleged collective refusal to deal with it constituted an antitrust violation.

Not only is this case unique in that an NPE, or “patent troll” in some circles, is striking out at alleged infringers with an antitrust attack, but the case was dismissed with what many thought was no hope of revival. Alas, Cascades’ amended complaint included enough additional facts to allow the case to move forward.…

FTC study on “patent troll” behavior: innovation enhancers or competition killers? Part 2

Posted in Intellectual Property, Patents

In the second of this two part series, we dig a bit deeper on the FTC’s recently proposed study on patent assertion entity (PAE) activity. In Part 1, we covered some background on PAEs and why they are singled out separately from other types of patent holders. Here in part 2, we discuss potential antitrust concerns with PAE activity, what information the FTC is seeking from PAEs and others, and — importantly — what the study means for you.

Potential antitrust issues

To place into context the entire concern with PAEs, as well as to better understand why the Federal Trade Commission is seeking the type of information it is requesting, we delineate briefly the potential antitrust concerns with PAE activity. It must be understood that a valid patent holder unquestionably has the right to exercise his/her patent, or to sit back and sue for infringement should another entity utilize the patent without permission. The mere assertion or enforcement of a PAE patent cannot, without more, constitute an antitrust violation. Nevertheless, a number of different antitrust concerns are implicated with PAE activity, the most prominent of which are presented below.

1. Acquisition and licensing of patents

A patent is an asset and, like any other asset, the more one acquires within a given market, the greater the concern that the acquirer will eventually garner market power and the ability to price its products/services above competitive levels. Or, in the patent context, license the patents above competitive levels. Though not …

FTC study on “patent troll” behavior: innovation enhancers or competition killers?

Posted in Intellectual Property, Patents

Executive Summary

Almost half of all infringement actions brought these days are brought by patentholders that do not practice the invention, but rather by holders who seek to capitalize on the value of the patent through either licensing fees or via damage awards in infringement actions. While simply asserting patent rights cannot be an antitrust violation, the manner in which these patent holders — referred to Patent Assertion Entities (PAEs) or sometimes, pejoratively, as “patent trolls” — amass their portfolios and assert their patents can raise antitrust concerns. Given the enormous toll that patent litigation takes on our innovation economy, the Federal Trade Commission has proposed a study “to understand how PAE behavior compares with patent assertion activity by other patent owners.” This post provides background on the issue and why PAEs are singled out separately from other types of patent holders. A subsequent post will discuss potential antitrust concerns with PAE activity, what information the FTC is seeking from PAEs and others, and what the study means for you.


For years, patent law and antitrust law have butted heads because patent law, which grants the patentee the right to exclude, is the antithesis of antitrust law, which seeks to increase output and maximize consumer welfare. Although the Sherman Act, the federal government’s basic antitrust law, has been hailed as the “magna carta of free enterprise,” patent law is rooted in the Constitution and accordingly has emerged victorious when the two have come into conflict. Over the past decade, …

Ammunition to rebut “obvious to try”

Posted in Intellectual Property, Patents

The recent Federal Circuit Court of Appeals decision in Leo Pharmaceutical Products, Ltd. v. Rea (Appeal No. 2012-1530, 2013 U.S. App. LEXIS 16610, decided Aug. 12, 2013) provides patent applicants and owners with some valuable ammunition in rebutting “obvious to try” based obviousness assertions against patent claims under 35 U.S.C. §103, both during patent prosecution and patent invalidity proceedings.

In Leo, an appeal from an inter partes reexamination proceeding at the U.S. Patent and Trademark Office, the court reversed the Board of Patent Appeals and Interferences’ holding of obviousness of a pharmaceutical composition on the basis that a person of ordinary skill in the art would not have been motivated to try, let alone make, the claimed invention (*14).

The court found that a claimed storage stable pharmaceutical composition comprising (1) at least one vitamin D analogue, (2) at least one corticosteroid, and (3) at least one solvent selected from a specified group, was “not simply a combination of elements found in the prior art” (*11) (three prior art references relied upon by the Board in finding the compositions obvious), but, rather, the inventors recognized and solved a problem with the storage stability of certain formulations — a problem that the prior art did not recognize and a problem that was not solved for more than a decade:…

Crowdsourced database now available to help identify patent trolls

Posted in Intellectual Property, Patents

You received a threatening letter from what looks like a “patent troll”  demanding a licensing fee and/or royalties but you can find little or no information about the party that sent the letter.  The sending party may not even be the owner of record for the identified patent(s) at the USPTO.  You may not even be able to determine whether or not the sending party is a patent troll.  How do you identify who you are up against?  A new online crowdsourcing tool, referred to as Trolling Effects, was launched on July 31, 2013 that provides a database of demand letters and other information that can help you identify patent trolls.  The Trolling Effects database is available at www.trollingeffects.org

Patent trolls often send letters to businesses demanding payment of a licensing fee to avoid expensive patent infringement litigation. In some instances, a draft complaint is attached and the letter states that the complaint will be filed on a certain date if the licensing fee is not timely paid.  The licensing fee is typically low enough that many businesses simply pay the fee just to make the patent troll go away.  Sometimes these demand letters are sent by the thousands or even tens of thousands so that the patent trolling becomes a profitable business model even if complaints are never or rarely filed.…

Isolated genes fail while synthetic cDNA survives US Supreme Court

Posted in Patents

In a long-awaited and much-anticipated decision, the US Supreme Court today issued a unanimous opinion in Association for Molecular Pathology v. Myriad Genetics, Inc., involving the BRCA1 and BRCA2 genes relevant to detection of increased risk of breast and ovarian cancer. The Court held that a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, even despite extensive research efforts that may have been conducted to determine the location of the gene in order to isolate it. 

On the other hand, the Court held that complementary DNA (synthetic DNA referred to as “cDNA”) does not present the same obstacles to patentability as naturally occurring, isolated DNA segments becuase “creation of a cDNA sequence from mRNA results in an exons-only molecule that is not naturally occurring” in that “the non-coding regions have been removed.” The Court concluded that “cDNA is not a ‘product of nature’ and is patent eligible under [35 USC] §101, except insofar as very short series of DNA may have no intervening introns to remove when creating cDNA. In that situation, a short strand of DNA may be indistinguishable from natural DNA.” Finally, the Court acknowledged that this case did not involve patents on new applications of knowledge about the BRCA1 and BRCA2 genes, and many of Myriad’s unchallenged claims are limited to such applications.

The Court’s decision will end the US Patent and Trademark Office’s policy of granting patents on isolated genes, and patent practitioners will …

Update on patent trolls

Posted in Patents

The America Invents Act (AIA), which became fully implemented March 16, 2013, revised U.S. patent law but included few reforms directed to curbing Non-Practicing Entity (NPE) or “patent troll” activity. Thus, not surprisingly, patent troll activity has continued at an alarming rate during the early months of 2013. Summarized below are the recent activities of the most infamous patent trolls.

Fortunately, the president and the legislature appear to desire additional patent reform to address patent trolls. On Feb. 14, 2013, President Barack Obama addressed patent trolls and the need for more comprehensive patent reform in a “Fireside Hangout” which is a live question and answer session hosted in a Google+ hangout. President Obama acknowledged that the reforms of the AIA “only went about halfway to where we need to go.”

On Feb. 25, 2013, the Saving High-Tech Innovators from Egregious Legal Disputes (SHIELD) Act of 2013 (H.R. 845) was reintroduced into the House by Rep. Peter DeFazio, D-Ore. and Rep. Jason Chaffetz, R-Utah. The SHIELD Act mandates a fee award to any party victorious on the issue of non-infringement or invalidity. This means that a company can sue for declaratory relief and recover its costs, even though the patentee never filed suit. The SHIELD Act excludes the inventors or “original assignees”, universities and their technology transfer organizations, and patentees that have a “substantial investment” in the exploitation of a patent via production or sale. The SHIELD Act requires NPEs to post a bond for the fees upon filing an infringement …

New European Unitary Patent and Unified Patent Court are on the horizon

Posted in Patents

Soon, a new unitary patent system will bring reduced cost and greater uniformity to European patents. The Unified Patent Court Agreement was signed Feb. 19, 2013 at the Council of the European Union meeting in Brussels, Belgium. At the meeting, ministers from 24 contracting EU member states signed on to the agreement establishing a Unified Patent Court (UPC). The Unified Patent Court Agreement represents one of the final major steps in forming a unitary patent system for Europe. The development of a European unitary patent system has been under discussion and development since the 1970s. The signing of the UPC agreement follows the adoption in December 2012 and entry into force of two regulations related to the unitary patent system. These two regulations pertain to unitary patent protection and the translation arrangements associated with the unitary patent, and came about through use of the enhanced cooperation procedure.

The European patent with unitary effect (“unitary patent”) will be a European patent granted by the European Patent Office (EPO) under the provisions of the European Patent Convention. The unitary patent will not replace national patents and classical European patents, but will instead offer another option for parties seeking patent protection. The EPO will continue with its existing search, examination and granting procedures. Following patent grant the patentee may request unitary effect for the member states participating in the unitary patent, and will be able to maintain a classical European patent for the European patent convention contracting states that are not participants in …

First-to-file patent system arrives March 16, 2013

Posted in Patents

With significant changes to law governing how the U.S. grants patents taking effect next month, Porter Wright recommends that all clients consider filing any contemplated patent applications by March 15. This includes filing non-provisional patent applications, and in some cases Patent Cooperation Treaty (PCT) patent applications, that are based upon any provisional or non-U.S. patent application filed since March 2012. Though there are some exceptions to this advice, waiting until after March 15 may be problematic.

In brief: For patent applications having any claim with an effective filing date after March 15, it will no longer be possible to overcome prior art by showing an earlier date of invention. Thus, the prior art for purposes of patentability will include: 1) third-party public disclosures of any kind, anywhere in the world, prior to your effective filing date; and 2) issued U.S. patents and published U.S. or PCT patent applications that were effectively filed before your effective filing date. In addition to not being able to “swear behind” a prior art reference by proving an earlier date of invention, the prior art date for patents and published patent applications may be as much as 18 months earlier than under current law because of foreign priority claims.

It is also important to note that inventors will not lose the benefit of any earlier provisional or non-U.S. patent application should they wait until after March 15 to file. Any claims that are adequately supported in the earlier filing will be entitled to that earlier …

Federal Circuit: District Court Misfired When It Applied Second Circuit Law To Injunctive Relief Test In Patent Infringement Case

Posted in Patents

The recently decided Revision Military case is important when either moving for a preliminary injunction or defending against such a motion in a patent-infringement suit because it makes clear that Federal Circuit law governs the application of the four-factor injunctive relief test. When the United States Court of Appeals for the Federal Circuit rules on an appeal from a district court in a patent-infringement case, the Federal Circuit applies its precedent on substantive matters involving patent law but applies the law of the circuit where the district court is located for procedural matters not involving patent law. For example, in an appeal from a trial for patent infringement that occurred in the federal district court in Vermont, which is located in the Second Circuit Court of Appeals, the Federal Circuit would apply its precedent to substantive questions related to patent-law issues but would apply Second Circuit law on procedural or evidentiary questions not unique to patent law – e.g., was testimony properly excluded at trial because it constituted inadmissible hearsay. In a recent decision, the Federal Circuit held in Revision Military, Inc. v. Balboa Manufacturing Company, that when determining whether to grant a preliminary injunction, district courts must apply Federal Circuit law to determine whether the plaintiff satisfied the traditional four-factor test used to determine whether an injunction should issue.

Revision Military and Balboa Manufacturing both design, manufacture, and sell protective eyewear, such as glasses and goggles, for those using firearms. Revision brought suit against Balboa, alleging that the …

Part Two of a Two Part Series: Preemptive Strikes Against a Competitor’s Patent Application Preissuance Submissions by Third Parties During Patent Examination

Posted in Patents

In this Part Two of my series on this topic I’ll take a look at the benefits and risks of the preissuance submission.

As you recall, we covered the results of recent changes to U.S. patent law by the Leahy-Smith America Invents Act ("AIA") that make it more feasible to prevent the issuance of a competitor’s patent (or at least narrow its scope). Not only do third parties have more time to submit prior art (and other relevant information), they can also assist the patent examiner by commenting on the relevance of the submitted information. While these changes make preissuance submissions more appealing, there are still important risks to consider before submitting prior art against a competitor’s patent application.

The Benefits of Preissuance Submissions Third party preissuance submissions are certainly more attractive and useful in light of the AIA as well as recently-implemented Patent Office rules. For one thing, preissuance submissions are relatively inexpensive compared to challenging the validity of an issued patent, either at the Patent Office or in litigation in federal court. A fee of $180 is required for every 10 items submitted, and no fee is required for a first submission of no more than three items. Also, while the concise description of relevance for each item should be carefully drafted, there is only so much one can say without crossing the gray line between description and argument.…

Part One of a Two Part Series: Preemptive Strikes Against a Competitor’s Patent Application Preissuance Submissions by Third Parties During Patent Examination

Posted in Patents

As a result of recent changes to U.S. patent law by the Leahy-Smith America Invents Act ("AIA"), preventing the issuance of a competitor’s patent (or at least narrowing its scope) is more feasible. Not only do third parties now have more time to submit prior art and other relevant information, they can also assist the patent examiner by commenting on the relevance of the submitted information. While these changes make preissuance submissions more appealing, there are still important risks to consider before submitting prior art against a competitor’s patent application.

Preissuance Submissions Prior to the AIA The prosecution (i.e., examination) of patent applications in the U.S. has historically been, and still is, an ex parte proceeding involving only the applicant and the patent examiner. Nevertheless, even prior to the AIA, third parties were permitted to submit patents and other publications relevant to the examination of a pending patent application; however, such submissions were rarely made for a number of reasons.…