The Truth About Hedy Lamarr

Written by Brandon Baum,  of Baum Legal and Practice Center Contributor.

It seems the entire Internet recently discovered the Hedy Lamarr patent story. Hedy Lamarr was a beautiful actress in the 1930′s-40′s, who was once dubbed “The Most Beautiful Woman in the World.” She also is the named co-inventor on a patent for an anti-jamming system for guiding torpedoes.  The system relied on a clever “frequency hopping” scheme, employing a player piano roll to switch frequencies. Frequency hopping is a type of spread spectrum technology that eventually made its way into the modern cell phone. Great story right? Beautiful actress is secretly a brilliant inventor.  (more…)

The Disharmonious Loss Of The Hilmer Doctrine

The following analysis of  the new 35 USC § 102(a)(2) provision in the Leahy-Smith America Invents Act eliminating the Hilmer doctrine and giving prior art effect to U.S. patent applications as of their foreign filing dates comes from Courtenay Brinckerhoff ,writer of PharmaPatents Blog and Partner at Foley & Lardner.

Here is an excerpt from the article originally published on Pharma Patents:

One of the many changes included in the Leahy-Smith America Invents Act relates to the date that a U.S. patent application is effective as prior art. While eliminating the Hilmer doctrine and giving prior art effect to U.S. patent applications as of their foreign priority dates might seem to be a step towards international harmonization, it actually may widen the gulf between the U.S. and the rest of world. (more…)

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…)

Join Us For Prior Art & Obviousness 2011 June 6, 2011

Prior art, 35 USC 102, continues to be a complicated concept for patent practitioners and their clients, undergoing evolving interpretations in the PTO and CAFC and even statutory reform. For every practitioner, it is a necessity to stay current on this touchstone of patentability. How does the concept of “prior art” and circumstance collide in the 21st century? How does prior art on the web impact the practice? What is here today, could be gone tomorrow, but can possibly be recovered mean in terms of prior art. And, in the age of biotech and nanotech, what is truly enabled? Is it a catalog listing, or even a peer review paper? Join us for PLI’s Prior Art & Obviousness 2011 on June 6, 2011 in New York or on July 25, 2001 in San Francisco (also available via live webcast) where you will obtain an essential working understanding of this complicated statute, including recent re-interpretations, case law, and a look at enacted or proposed statutory revisions. And let’s not overlook the most common reason any application is rejected or patent held invalid: 35 USC 103, Obviousness. KSR (already 4 years old) will be explored from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSRpigeon hole!

Click here for more information on Prior Art & Obviousness 2011: Current Trends in Sections 102 & 103.

We will have highlights here on the Practice Center so tune in if you can’t make the program!!

Three References PLUS Predictable Variation Doom Utility Lighter Claims

Written by Brandon Baum , of baum legal and Practice Center Contributor.

Some have suggested that the Federal Circuit’s recent decision in Tokai Corp. v. Easton Enterprises, Inc., No. 2010-1057, -1116 (Fed. Cir. Jan 31, 2011), signals a raising of the bar to show nonobviousness post-KSR.  See, e.g., Quinn, KSR Fears Realized: CAFC Off the Obviousness Deep End; Patently-O, The Teeth of KSR: Obviousness on Summary Judgment.  This author disagrees.

The technology at issue in Tokai is straightforward: a child-safety mechanism for use on a “utility lighter,” the type of lighter used to light a barbecue or pilot light. The safety mechanism consists of a spring-loaded locking lever that must be unlocked with one finger while simultaneously depressing the trigger to light the flame with another.  Although two-finger safety mechanisms had been used in prior art cigarette lighters, they had never been used with a utility lighter prior to the patentee’s application. Nevertheless, the panel majority of Judges Lourie and Bryson upheld the district court’s determination on summary judgment that the patents-in-suit were obvious. (more…)