In Dawson v. Dawson, the Federal Circuit considered an unusual case with a question that often arises in interferences: when did the inventor invent the subject matter at issue. While the decision does not break new ground in the law of conception, it highlights the issues that can arise when an inventor changes employment before an invention has been reduced to practice.Continue reading this entry
Under the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), the USPTO no longer will institute interference proceedings in order to determine who was the first person to invent a claimed invention. While an applicant will be able to petition the USPTO to institute a derivation proceeding, the statute and implementing regulations provide for such proceedings under only very limited circumstances.Continue reading this entry
In Loughlin v. Ling, the Federal Circuit affirmed a decision of the USPTO Board of Patent Appeals and Interferences that had canceled the sole claim of Loughlin’s patent in an interference proceeding. The decision turned on the interplay between the interference statute of limitations (35 USC § 135(b)(2)) and the domestic priority statute (35 USC § 120).
In Hollmer v. Harari, the Federal Circuit clarified the requirements for incorporation by reference of subject matter required to support a priority claim under 35 USC § 120. The decision underscores the care that must be taken in a seemingly clerical matter to preserve substantive patent rights.
The deadline for submitting public comments on the USPTO’s proposed rules for patent trial proceedings is next week, April 9 and 10, 2012. Specifically, public comments on the seven Federal Register notices containing the USPTO’s rulemaking proposals are due as follows:
- Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions—public comments due April 9, 2012;
- Practice Guide for Proposed Trial Rules—public comments due April 9, 2012;
- Changes to Implement Inter Partes Review Proceedings—public comments due April 10, 2012;
- Changes to Implement Post-Grant Review Proceedings—public comments due April 10, 2012;
- Changes to Implement Transitional Program for Covered Business Method Patents—public comments due April 10, 2012;
- Transitional Program for Covered Business Method Patents—Definition of Technological Invention—public comments due April 10, 2012;
- Changes to Implement Derivation Proceedings—public comments due April 10, 2012.
The “first-to-file” provisions of the America Invents Act (AIA) take effect on March 16, 2013. Here, I highlight a few reasons why many applicants will not want their patent applications to be subject to the new version of 35 USC § 102, and why all applicants—and their patent counsel—should be aware of the significance of March 15, 2013—the Ides of March.
It has been a while since I’ve taken an in-depth look at the first-to-file provisions of the America Invents Act. This interesting fact pattern comes from Andrea Levesque, IP Counsel at ARC Energy, and relates to the interference provisions that survive the general March 16, 2013 effective date of the first-to-file provisions.Continue reading this entry
In Streck, Inc. v. Research & Diagnostic Systems, Inc., the Federal Circuit confirmed that a district court is to undertake de novo review when new evidence is introduced in an interference action under 35 USC § 146.
Now that we’ve been studying the Leahy-Smith America Invents Act for a few weeks, some of its subtle intricacies are coming to light. One of the more complex provisions relates to the effective date and applicability of the first-to-file provisions of new 35 USC § 102.
In Creative Compounds, LLC v. Starmark Laboratories, the Federal Circuit clarified that the “clear and convincing” burden of proof applies to an allegation of prior invention unless an action is brought under 35 USC § 291 or the parties identify and agree on common claimed subject matter and seek an adjudication of priority. While Patent Reform may do away with the specific provisions at issue in this case, at least some of the principles may carry over to the proposed “derivation” proceedings.
Last week, The Kojo Nnamdi Show on Washington, D.C. public radio station WAMU had two programs about patent reform. On Tuesday, there was a panel discussion on “Innovation and Patent Reform.” On Wednesday, Kojo talked with USPTO Director David Kappos about “Updating the U.S. Patent Office.” While I usually cringe when mainstream media discusses patent issues, I found these shows to be very good, even if I didn’t agree with everything that was said. One issue I would like to press Director Kappos about is his assertion that the pending patent reform legislation will help the USPTO solve the problem of the examination backlog.
In Goeddel v. Sugano, the Federal Circuit determined that a priority application that disclosed the gene encoding a full-length “precursor” protein did not constitute constructive reduction to practice of interference counts that focused on the “mature” protein. This decision is an important reminder that a disclosure that might be effective to render a claim obvious may nonetheless be ineffective to support a priority claim.