With patents, everything starts and ends with the claims which means that the specification, the arguments presented during prosecution and all of the patent applicant’s efforts affect the language of the claims. For example, a patent specification must enable one of ordinary skill in the art to make and use the invention as recited in the claims. Alcon Research Ltd. v. … [Read more...]
After filing a patent application
After filing a patent application, the invention is now patent pending which marks the point at which it is safe to start marketing the invention. The process of patent protecting the invention has now formally started. Browse related articles below.
Does a restriction requirement disclaim non-elected species?
Below, Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co., LTD (Fed. Cir. August 1, 2018) is discussed in terms of whether the scope of design patent protection is affected when electing a species in response to a restriction requirement. However, the context of the parties and how the litigation arose provides insights on how U.S. companies might better protect … [Read more...]
Claim of priority to an earlier filed patent application
What is a claim of priority? A claim of priority is a reference in a later filed patent application back to an earlier filed patent application. What is the benefit? The claim of priority allows the later-filed application to enjoy a priority date as of the filing date of the earlier filed patent application and not the actual filing date of the later filed patent … [Read more...]
Obviousness is based on path PHOSITA would have taken
A factor in analyzing obviousness Obviousness is based, in part, on the path a person having ordinary skill in the art (PHOSITA) would have taken based on the prior art, and not the path the inventor actually took. In the following case, the patent owner took a commonly known path to produce a stable version of a known drug compound but in taking that path created a new … [Read more...]
Teach away argument for patentability requires more than a preference away
Meiresonne v. Google (Fed. Cir. March 7, 2017) stands for the proposition that a proper teach away argument to defeat of obviousness rejection requires a discussion in the prior art of more than just a preference away, disparagement or being critical of the combination suggested by the examiner to make the claimed invention. A proper teach away argument requires that the prior … [Read more...]
Detailed explanation for motivation to combine required for obviousness
Summary A proper rejection on obviousness requires that the examiner show how one of ordinary skill in the art would have been motivated to combine two or more prior art references to make the claimed invention. In Personal Web Technologies v. Apple (Fed. Cir. 2/14/17), the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) failed to explain why a relevant … [Read more...]
Prior art must disclose EVERY limitation for a proper anticipation rejection
For an examiner to reject a claim based on anticipation, each and every limitation must be found either expressly or inherently in a single prior art reference. An anticipation rejection is a rejection where the examiner is of the opinion that the claimed invention is not novel. However, the United States Patent and Trademark Office (USPTO) has taken a liberal approach to … [Read more...]
Broadest reasonable interpretation of claim terms cannot be illogical
Basic facts In D’Agostino v. MasterCard International (Fed. Cir. 2017), the limits of what is the broadest reasonable interpretation of a claim limitation are explored. In this case, if the interpretation is illogical based on the claim structure, the patent specification, and the file history, then the interpretation would be unreasonably broad. MasterCard petitioned the … [Read more...]