Tag Archives: Priority Claim

Federal Circuit Finds Hole In "This" Priority Claim

In Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., the Federal Circuit affirmed the district court’s finding that the patent at issue was invalid because of a defective priority claim. While practitioners may cringe at the apparent clerical error underlying the decision, the USPTO’s new requirement that priority claims be included in an Application Data Sheet … Continue reading this entry

Federal Circuit Applies "Four Corners" Test For Incorporation By Reference To Support Priority Date

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.… Continue reading this entry

Will Any Patent Application Be Better Off Under The America Invents Act?

The changes to 35 USC § 102 embodied in the America Invents Act (AIA) take effect on March 16, 2013, under complicated effective date provisions. The general consensus seems to be that applicants should try to file new applications before the law changes, because (for example) applications filed under the new law will be subject … Continue reading this entry

Written Description: When Too Much Is Not Enough

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 … Continue reading this entry

Patent Stakeholders Speak Out On Enhanced Examination Timing Control Initiative

On July 20, 2010, the USPTO hosted a public meeting on the proposed Enhanced Examination Timing Control Initiative, which would offer three tracks for examination while delaying examination of foreign-based applications.  (Other blog articles discuss some drawbacks of this proposal and its particular impact on foreign-based applications.) The program began with opening remarks from Director Kappos, which were followed by brief … Continue reading this entry

Part II: Proposed Examination Options Derail Foreign-Based Applications

The USPTO’s proposed changes to the application queuing system will derail foreign-based applications in order to promote the USPTO’s worksharing goals. While domestic applicants will be able to opt into one of three examination tracks (“prioritized,” “traditional,” and “delayed”) applications that claim priority to a foreign application will have their brakes set until the foreign patent … Continue reading this entry