Patent practitioners are probably well familiar with circumstances in which prosecution history estoppel can limit the scope of a U.S. utility patent’s claims. Examples include claim amendments and statements made by the applicant during prosecution in papers filed with the U.S. Patent and Trademark Office (USPTO). Less common are scenarios in which prosecution history estoppel may limit a U.S. design patent’s claims. The Federal Circuit’s recent decision in Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co. provides one scenario where prosecution history estoppel for a design patent was a key issue in claim interpretation.
Christina Sperry is a Member based in the firm’s Boston office. She is an experienced patent attorney whose clients, from start-ups to large corporations and academic institutions, are focused in the medical technology space. Christina advises on patent preparation and prosecution, and provides infringement, validity, and right-to-use opinions for clients in the United States and internationally. She is particularly focused on mechanical, electrical, and electromechanical technical fields; printer and imaging technology; wireless technology; semiconductors; computer hardware; computer network technology; software; financial services; cell sorting technology; and radar technology.
Is there any possible danger in using the abbreviation “i.e.” in the specification of a U.S. patent application? The Federal Circuit’s recent decision in TF3 Limited v. TRE Milano, LLC shows that the answer is “yes.” The court provided a reminder that use of “i.e.” in the specification signals an intent to define the term to which it refers. Thus, the court held that the term cannot be interpreted to be broader than the definition provided in the specification by the use of “i.e.” when interpreting the term under the broadest reasonable interpretation standard before the U.S. Patent and Trademark Office.
This article is first in a two-part series focusing on various issues related to priority claims in U.S. patent applications. Part 1 is a general overview of how to make a proper priority claim, without addressing how to correct an improper priority claim, which will be examined in Part 2.
In general, for examination purposes at the U.S. Patent and Trademark Office (USPTO), a priority claim determines the priority date of a patent application. But why is that important? Because the priority date effectively determines what references can and cannot be asserted as prior art against a patent application during its examination. That is, the priority date draws a line in the sand for prior art, and this line cannot be crossed.
Struggling to keep case law relating to subject matter eligibility organized? In February 2018, the United States Patent and Trademark Office (USPTO) released an improved Eligibility Quick Reference Sheet, providing patent practitioners with a useful tool for analyzing claims in view of 35 U.S.C. § 101 subject matter eligibility requirements.
In an application of 2017 U.S. Supreme Court precedent in Impressions Products, Inc. v. Lexmark Intern., Inc., the Northern District California in International Fruit Genetics LLC v. Orcharddepot.com, No. 4:17-cv-02905-JSW, recently denied a motion to dismiss a claim of patent infringement by holding that the patent exhaustion doctrine did not apply to a sale of a patented product that was outside the scope of the license granted by the patent owner. This decision helps inform how licenses may be interpreted post-Impression Products.
The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a USPTO Patent Quality Chat webinar on February 13, 2018 (click here for the webinar slides). Highlighted features of the eMod project are described in a May 2017 Global IP Matters article. This article provides an overview of the eMod project and focuses on updates to the eMod project as explained in the February webinar.
In general, the eMod project will provide a new interface, Patent Center, that combines EFS-Web and PAIR into a single interface for filing and managing patent applications. Benefits of Patent Center include an improved interface and improved processes for submitting, reviewing, and managing patent applications and increased application processing and publication accuracy. Continue Reading Updates to USPTO eMod Project to Improve E-Filing/Managing Patent Applications
We can take two valuable lessons from a recent decision of the Federal Circuit:
- Review all check boxes on forms when filing a U.S. patent application; and
- The United States Patent and Trademark Office is not to blame for deadlines falling on federal holidays.
On February 6, 2018, in Actelion v. Matal, the Federal Circuit affirmed the decision of the district court granting summary judgment in favor of the United States Patent and Trademark Office (PTO). The dispute centered on the 40-day “A delay” patent term adjustment (PTA) awarded by the PTO to Actelion for U.S. Patent 8,658,675 (“the ‘675 patent”), entitled “Pyridin-4-yl Derivatives.” Actelion asserted that it was entitled to 45 days of PTA, or alternatively, at least 41 days.
When trying to overcome an obviousness rejection of a patent claim, an argument that two or more cited references cannot be combined may be used. For example, it can be argued that the combination is improper because the modification of a reference completely changes its “fundamental principle of operation.” However, it can be difficult to overcome obviousness rejections using this argument, which is highlighted in a recent Federal Circuit decision in University of Maryland v. Presens. In this case, the court affirmed an inter partes reexamination (IPR) decision of the Patent Trial and Appeal Board (PTAB) that affirmed the examiner’s rejection of claims in U.S. Patent 6,673,532 (“’532 patent) as obvious despite the plaintiff’s “changes the principle of operation” argument. Although the decision is non-precedential, it provides helpful information to patent practitioners and litigators for arguing obviousness based on changes to a reference’s fundamental principle of operation.
The ’532 patent discloses an optical method of monitoring various cell culture parameters. Claim 1 of the ’532 patent, deemed as representative, reads as follows: Continue Reading Overcoming Obviousness Rejections: Arguing Changes to Fundamental Principle of Operation
Under U.S. patent law, while there is no duty to perform a search of relevant art, inventors and those associated with filing or prosecuting patent applications as defined in 37 C.F.R. § 1.56 have a duty to disclose to the U.S. Patent and Trademark Office (USPTO) all known prior art or other information that may be “material” in determining patentability. In U.S. patent practice, this duty is deemed satisfied when “material” information is submitted to the USPTO in an information disclosure statement (IDS). The duty continues until a patent has issued, and importantly, if one fails to live up to this duty, the resulting patent may be deemed unenforceable.
While there is no hard and fast rule as to what information is “material,” a good rule of thumb is to disclose all information that is relevant to the claimed subject matter. Such information can include other related U.S. patent applications and patents of the applicant or references cited in a PCT or foreign counterpart application. This article explores when and how to file IDSs in satisfying the duty to disclose “material” information, as well as common mistakes to avoid in IDS filings.
As 2018 begins and IP strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2017. According to the many readers of Global IP Matters, hot topics included navigating the waters of U.S. patent prosecution, evaluating obviousness, and ITC treatment of standard-essential patents (SEPs).