The Patentability Black Hole

Inventors in the unpredictable arts often have to face an unpredictable paradox when patenting an invention.  There seems to be a disconnect between requirements for an inventor to disclose an invention versus the prior art to render an invention unpatentable. Fenwick & West refer to this as the “patentability black hole”.  In this article, Fenwick & West discuss this dilemma and how to solve this patent law paradox.

An inventor faces a number of significant hurdles and pitfalls in patenting his invention. Having a patent specification providing proper and sufficiently thorough disclosure of the invention being claimed by the patentee can, by itself, be a large hurdle, especially in the biosciences where experimental data is essential. Section 112, first paragraph, of Title 35 of the United States Code sets forth the disclosure requirements that all patentees must meet. This section is commonly interpreted as requiring that a patent specification contain a full written description showing that the inventor was in possession of the claimed invention at the time the patent application was filed (the “written description” requirement) and that a patent specification enable a person of ordinary skill in the relevant field to make and use the invention based on the specification (the “enablement” requirement). See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Company, 598 F.3d 1336, 1340 (2010). (more…)

Advanced Patent Prosecution Workshop: Chemical & Pharmaceutical Claim Drafting

Last week, I attended PLI’s Advanced Patent Prosecution Workshop 2011 in New York where an esteemed panel of experts offered hands-on claim drafting and amendment writing techniques.  The program was organized into four technological sections: Biotechnology, Chemical/Pharmaceutical, Electrochemical and Electronics/Computers. I attended the Chemical/Pharmaceutical segment where Michael Davitz, Partner at Axinn, Veltrop & Harkrider and Practice Center Contributor, discussed Chemical and Pharmaceutical Claim Drafting.  Here are some highlights from his presentation….

  • Development of a Patent Portfolio – patent portfolio is developed in the context of a business plan and where in the life cycle the product is.
  • Generic Player – differentiate product from innovator and create difficulty for competitors, other generics.
  • Innovator – at what stage is the development? Integrate FDA and patent filing strategies and develop patents with an eye towards forcing infringement.
  • Strategies for Early-stage and Late-stage Products
  • Developing a Portfolio of both Listed and Unlistable Patents
  • Start with the end-game and plan backwards (more…)

Advanced Patent Prosecution Workshop: Claim Drafting & Amendment Writing

Yesterday, I attended PLI’s Advanced Patent Prosecution Workshop 2011 in New York where an esteemed panel of experts offered hands-on claim drafting and amendment writing techniques.  The program was organized into four technological sections: Biotechnology, Chemical/Pharmaceutical, Electrochemical and Electronics/Computers. I attended the Chemical/Pharmaceutical segment whereJohn Todaro of Merck & Co. discussed advanced issues in drafting of patent specifications.

Here are some highlights from his presentation….

-Draft the claims or Summary of the Invention first, because of the primary role of the patent specification in claim construction

-General Considerations in Drafting the Specification:

  1. Distinguish invention from the prior art
  2. Define claim terms
  3. Provide broadest possible claim scope, while complying with section112 requirements
  4. Consider ex-US patent law issues

-Control the length of the application – too long = excess fees. Cost issue is important, think about when drafting the application. (more…)

EDTX Closely Scrutinizes Nuisance Value Settlement Strategy

The following article discussing the increased scrutiny serial patent litigation against large numbers of defendants is receiving in the Eastern District of Texas comes courtesy of our friends at DLA PiperJohn Guaragna and Brian Erickson.

A trend is emerging in multi-defendant patent cases in the patent-heavy docket of the Eastern District of Texas – at least in the numerous cases assigned to Judge Leonard Davis in Tyler. Over the past several months, Judge Davis has repeatedly expressed concerns surrounding plaintiffs who assert questionable patents to extract “nuisance value” settlements. In a recent patent case brought by Raylon LLC, Judge Davis summarized his views:

[T]his Court has some concerns about plaintiffs who file cases with extremely weak infringement positions in order to settle for less than the cost of defense and have no intention of taking the case to trial. Such a practice is an abuse of the judicial system and threatens the integrity of and respect for the courts. Often in such cases, a plaintiff asserts an overly inflated damages model, seeking hundreds of millions of dollars, and settles for pennies on the dollar, which is far less than the cost of defense. Where it is clear that a case lacks any credible infringement theory and has been brought only to coerce a nuisance value settlement, Rule 11 sanctions are warranted. (more…)

10 Mistakes That Will Kill Your Patent in Litigation & How To Avoid Them

Brandon Baum, of Baum Legal and Practice Center Contributor, will be speaking about litigation issues relevant to patent prosecution at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on July 8th in San Francisco.  Brandon shared with us an article he wrote for the Course Handbook entitled 10 Mistakes That Will Kill Your Patent in Litigation And How To Avoid Them. The following is an excerpt from the article:  

It is often said that hiring a litigator to draft a contract results in an iron‐clad contract that no one will ever sign. That’s because litigators learn by seeing how things can go wrong, and shoring things up to prevent that scenario from recurring in the future. We typically get involved when reasonable minds have failed to agree – the joint venture has gone south, the software didn’t perform, or the parties disagree over the scope or value of patented technology. Thus, we have developed a treasure trove of anecdotal evidence of what not to do and we live by the motto “learn from the mistakes of others, as you may not live long enough to make them all yourself.”1

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