Patent Law Practice Center

Patent Reform Update: Summer Debate Ahead For America Invents Act

Although we haven’t heard much about Patent Reform in the last few weeks, Scott McKeown, Partner at Oblon Spivak and Practice Center Contributor, discusses below why he believes we will still see some form of patent reform in 2011.

Overhaul to U.S Patent System Awaits Further Debate

There has been true progress toward enacting patent reform in 2011. First, in March,S.23 was shepherded through the Senate in a matter of weeks by Senator Leahy. Next the House took up H.R. 1249. The House companion bill includes much of the same, if not identical provisions to S.23. A few weeks back H.R. 1249 was refined by Manager Amendment and voted out of committee for floor debate.

With the House now back in session, H.R. 1249 will now await its turn in the legislative queue. An early summer debate (mid-late June) seems likely based upon the current House calendar. During this debate, key provisions of the bill will likely be attacked anew, further amendments have been promised.

Prospects for bill passage, at least in some form, still seem very high. With the current PTO budget crunch, fee diversion will likely be a significant rallying cry for suporters.

Stay Tuned.

Litigation Issues Relevant To Patent Prosecution: The Defense of Inequitable Conduct

Jeanne Curtis, a Partner at Ropes & Gray, sent in this article she wrote with her colleagues discussing the defense of inequitable conduct and the recent Federal Circuit holdings pertaining to the doctrine.  Curtis will speaking at PLI’s Fundamentals of Patent Prosecution 2011: A Boot Camp for Claim Drafting & Amendment Writing on June 17, 2011. The following is an excerpt from the article:

I. INTRODUCTION

All patent applicants have a duty to prosecute their applications with “candor and good faith.” This duty of candor also extends beyond mere applicants, further covering individuals who are “substantively involved in preparation or prosecution of the application,” including named inventors and attorneys or agents who help prepare or prosecute the application. The duty does not, however, apply to corporations or institutions unless an individual within the corporation or institution was substantively involved in prosecuting the application.

Compliance with the duty of candor is of paramount importance during prosecution of an application. Any failure to comply with the duty exposes an applicant to a potential finding of inequitable conduct, which carries with it a host of undesirable and potentially expensive consequences. The Federal Circuit has articulated that “[a] patent may be rendered unenforceable for inequitable conduct if an applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially false information to the PTO during prosecution.” Read the rest of this entry »

Medtronic’s Attacks On Edwards Lifescience’s Heart Valve Patents Among Reexamination Requests Filed Week of 5/2/11

Here is the latest installment of Reexamination Requests from Scott Daniels, of Reexamination Alert and Practice Center Contributor….

Medtronic has requested reexamination of two Edwards Lifesciences’ patents claiming heart valve systems for implantation, U.S. Patent Nos. 6,582,462 & 7,789,909 (see inter partes Request Nos. (3) & (4).  The two companies are long-time rivals in that market and are currently in litigation in Delaware regarding the ‘462 and ‘909 patents.

There were also requests for reexamination of patents involved in infringement disputes that we have been tracking.  One is U.S. Patent No. 7,349,012 which is one of the many patents in the litigation between MobileMedia Ideas and RIM (see inter partes Request No. (2)).  The other is U.S. Patent No. 7,917,186 owned by DexCom which is in litigation against Abbott Diabetes Care (see ex parte Request No. (6)). Read the rest of this entry »

Patent Drafting: Language Difficulties, Open Mouth Insert Foot

The following post was written by Gene Quinn , of IPWatchdog and Practice Center Contributor.

Lately I have been this “educational” mindset more than is usual. Not only am I gearing up for the run of summer PLI Patent Bar Review Courses, which begin [this] week in New York City, but at the beginning of June I will be teaching a Patent Prosecution course for a week at the John Marshall Law School in Chicago, Illinois. What better topic to revisit than the importance of using the right language when describing an invention and dealing with an examiner. Patent attorneys darn near need to be magicians when it comes to language, which is the primary tool of our craft. Picking the right word and the right way to say things is critical. Even more critical, perhaps, is not saying the wrong thing, or worse yet saying something that is clear but not what you intended.

When dealing with the topic of picking and using the right language to describe an invention in a patent application it is worth observing that having a dictionary and thesaurus at the ready is a pre-requisite to being a good drafts-person. If you are not consulting a dictionary and thesaurus you are doing yourself, or your client, a tremendous disservice. But picking the right word is but one of the problems, and probably the easiest to deal with if you train yourself not to assume you have a Shakespearean grasp of the English language and force yourself to consult that dictionary and thesaurus. So today I thought I would focus on a couple big ticket matters that are easy to overlook, at least when patent novices are doing the drafting.

Click here for the full IPWatchdog article.

Patent Litigation Treatise: The Indispensable Resource of Patent Litigators

PLI’s Patent Litigation enhances your ability to prevail at trial while helping you cut the costs and complexity of litigation.

Many of America’s leading patent litigators guide you through all the litigation stages, helping you to understand various infringement actions and their respective burdens of proof; conduct comprehensive pre-suit investigations that streamline your cases; develop potent case themes; assemble strong litigation teams; get an early edge over opponents during discovery; reduce expenses by developing smart litigation budgets; maximize the persuasive impact of documents, exhibits, and lay and expert witnesses; and fortify your case while controlling costs by making savvy use of computers, jury consultants, and litigation support vendors.

Patent Litigation also shows you how to spot and shore up weaknesses in your case; make effective pretrial, trial, and post-trial motions; enhance your direct-examination and cross-examination skills; accurately measure and prove the amount of damages; and achieve favorable settlements when litigation is not the way to go.

Updated at least once a year, Patent Litigation is an indispensable practical resource for every patent litigator.