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Archives: Patents

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The next big fight: 3D printing and intellectual property

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 … Continue Reading

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

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 … Continue Reading

Ammunition to rebut “obvious to try”

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 … Continue Reading

Update on patent trolls

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 … Continue Reading

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

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 … Continue Reading

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

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 … Continue Reading

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

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 … Continue Reading

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

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 … Continue Reading

Prioritized Examination of Patent Applications Under Leahy-Smith America Invents Act

The Leahy-Smith America Invents Act ("AIA") was enacted on September 16, 2011. The changes implemented by this Act are wide-ranging and significant, and different provisions have different effective dates, with many taking effect September 26, 2011, September 16, 2012, or March 16, 2013. We will be providing additional information in the coming weeks and months.… Continue Reading

Discovering Ensnarement

Ensnarement is a powerful defense in any patent case where the doctrine of equivalents is at issue.  It’s time for defendants to “discover” this under-utilized defense.    Despite litigating numerous doctrine of equivalents cases, I’ve only litigated one case where an ensnarement defense was vigorously asserted. Ensnarement, seminally set forth in Wilson Sporting Goods, prevents … Continue Reading

Best Mode Requirements Apply To Each Inventor

A decision issued by the Federal Circuit April 29, 2011 offers a lesson for patent prosecutors to talk to each named inventor about what they consider to be the best way of practicing their invention.  Though anti-intuitive, it is possible to have multiple best modes. In Wellman, Inc. v. Eastman Chemical Co. (Fed. Cir. 2011), the … Continue Reading

Track One Expedited Patent Examination Program Postponed

According to a message to USPTO Employees from Director David Kappos, the Track One expedited patent examination program (discussed in this earlier post), scheduled to go into effect on May 4, 2011, is postponed until further notice.  As reported in Hal Wegner’s newsletter, the cancellation is due to budgetary cuts and whether and when prioritized … Continue Reading

New Fast Track Examination at the USPTO

Beginning May 4, 2011, a US patent applicant can request prioritized or "fast track" examination at the USPTO under the newly promulgated "Track 1" procedure of 37 C.F.R. 1.102(e). To obtain the Track 1 prioritized examination, the following conditions must be met when the application is filed: (1) the application must be an original utility or … Continue Reading

Is Patent Reform Finally On Its Way?

There was much excitement when the U.S. Senate overwhelmingly passed (95–5) the America Invents Act (formerly titled the Patent Reform Act of 2011) (S.23 or AIA), on March 8, 2011. The America Invents Act  This legislation represents a major patent reform initiative that has been under congressional debate for at least six years and is … Continue Reading

False Marking Qui Tam Provision Found Unconstitutional

As has been widely reported, there has been an influx of false marking cases hitting the courts over the past year based on 34 U.S.C. Section 292, the False Marking Statute.  That statute, loosely translated, makes it an offense to mark a product or use in advertising a  patent number or the words "patent," "patent … Continue Reading

Written Description and Enablement Separate Requirements

On March 22, in Ariad Pharmaceuticals v. Eli Lilly & Co., No. 2008-1248, an en banc panel of the U.S. Court of Appeals for the Federal Circuit reaffirmed that § 112, ¶ 1 contains a written description requirement that is separate and distinct from the enablement requirement. The court ruled that the asserted claims of … Continue Reading