Patent drafting tools that help broaden scope of patent protection

Posted On :April 3rd, 2014 By James Yang

In drafting patent applications, it may be useful to broaden the language by using words such as “preferred” and to use claim language such as “substantially” or words of similar import.  Preferred connotes that the embodiment or aspect being described is merely preferred but other examples are also contemplated.  Also, the word “substantially” in the […]

Construing claim when validity and infringement depends on size

Posted On :March 18th, 2014 By James Yang

Construing claim when validity and infringement depends on size The Federal Circuit in Takeda v. Zydus (Fed. Cir. Feb. 20, 2014) resolved issues in relation to claim construction, infringement and invalidity.  The patent was directed to an orally ingestable tablet that disintegrated in your mouth where the formulation contains granules small enough (i.e., 400 µm […]

Doctrine of Equivalents not limited by foreseeability of the structure

Posted On :March 12th, 2014 By James Yang

Doctrine of Equivalents not limited by foreseeability of the structure In determining the scope of patent protection under a patent, the claims are construed literally to determine whether the accused product infringes the patent’s claims.  If infringement is not literally found, then a determination is made whether those elements or limitations not literally found in […]

Junior filer wins patent under first to invent but not first to file

Posted On :March 2nd, 2014 By James Yang

Junior filer wins patent under first to invent but not first to file Sanofi v. Pfizer (Fed. Cir. November 5, 2013) illustrates one situation in which the older, pre-America Invents Act (AIA), first-to-invent rules benefited a junior filer, and the patent was awarded to the junior filer. Under the current first inventor to file rule, […]

Use of intrinsic record guides patent claim construction

Posted On :February 21st, 2014 By James Yang

Use of intrinsic record guides patent claim construction The scope of patent protection for a patent is defined by claims which are located at the end of the patent.  One of the difficulties in determining whether infringement occurs revolves around patent claim construction which determines the meaning of terms or language in the claims.  As […]

Procuring multiple patents (guns) is good patent strategy

Posted On :February 17th, 2014 By James Yang

Procuring multiple patents is good patent strategy In Institut Pasteur v. Focarino (Fed. Cir. Dec. 30, 2013), the Federal Circuit dealt with three different patents all related to one parent patent application in three different ways.  One of the patents did not survive but the other two did.  For patent owners, a good patent strategy […]

Earlier priority date given with passing reference in patent application

Posted On :February 3rd, 2014 By James Yang

Earlier priority date given with passing reference in patent application For important or keystone inventions, the initial patent application may expand to a number of further continuing applications (i.e., continuation, divisional and continuation-in-part applications) which all relate back to the base parent patent application.  For example, the entrepreneur or company may develop additional features and […]

Broken chain of priority invalidates patent

Posted On :January 28th, 2014 By James Yang

Broken chain of priority invalidates patent The filing of a continuing patent application (i.e., continuation, divisional or continuation in part application) may have significant benefits for the patent owner.  For example, these continuing applications may be used to secure patent protection for previously unexamined subject matter (i.e., non-elected inventions) or seek broader patent protection for […]

Patent term extension granted for some applications filed with RCE

Posted On :January 25th, 2014 By James Yang

Patent term extension granted for some applications filed with RCE Based on Novartis v. Lee (Fed. Cir. 2014), if patent prosecution lasted more than 3 years and you filed a request for continued examination, you should investigate whether you are due a patent term extension and file any request for correction within 180 days of […]

Explanation of technology can impact result of patent suit

Posted On :January 21st, 2014 By James Yang

Explanation of technology can impact result of patent suit In Motorola Mobility v. ITC (Fed. Cir. 2013), the defendant (Motorola) initially argued that they were not infringing on Microsoft’s patent.  They also argued that Microsoft’s patent was invalid for being anticipated or obvious in view of the prior art.  However, duringthe ITC investigation, Motorola conceded […]