Patent Law Practice Center

Prosecuting Patent Applications: Establishing Unexpected Results

Today’s guest post was written by Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP.

The purpose of this article is to provide suggestions on how to effectively make a showing of unexpected results during prosecution before the U.S. Patent and Trademark Office in order to overcome a rejection based on obviousness under 35 U.S.C. §103(a).

I. General Comments

“One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of ‘unexpected results,’ i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. The basic principle behind this rule is straightforward – that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995). Read the rest of this entry »

Apple Requests For Reexamination Of MONKEYMedia Patents Among Those Filed Week Of December 6th

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

When sued for patent infringement, Apple’s strategy this year has been to request reexamination of the patents-in-suit as soon as possible.  It repeated that strategy this week by filing inter partesr equests against two MONKEY Media patents (see Inter partes Request Nos. (3) & (5))..

DNA2.0, Inc. has requested reexamination of U.S. Patent No. 5,786,464 owned by NIH for “Over-expression of Mammalian and Viral Proteins” (see Ex parte Request No. (12)).   An ironic aspect of this conflict is that DNA2.0 is a past recipient of grant money from NIH.  Read the rest of this entry »

Issuance Of Continuation Patents During Litigation Undermine Defense To Willful Infringement

The following post comes from Scott A. McKeown, partner at Oblon Spivak, Practice Center Contributor and writer for Patents Post Grant.

Texas Court Likens Issuance of Continuation Patents During Litigation to Patent Reexamination

[W]illful infringement exists where an accused infringer acted “despite an objectively high likelihood that its actions constituted infringement of a valid patent.” In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). In assessing the propriety of a post-filing willfulness allegation (i.e., after the  complaint is filed with the court) Seagate is oft cited for the proposition that a plaintiff must seek injunctive relief (i.e., preliminary injunction). However, court’s have refused to impose such a wooden rule. Instead, court’s look to the totality of the circumstances, including factors such as the existence of concluded patent reexaminations. Read the rest of this entry »

Bilski’s Impact On Life Science Patents

Today’s guest post was written by our friends at DLA Piper, Richard Mulloy (Partner in the Patent Litigation practic)  and Lisa Haile (Patent Prosecution partner and the co-chair of DLA Piper’s Global Life Sciences sector).

Two significant developments arose out of Bilski regarding life science patent claims.  First, the Supreme Court’s endorsement of the machine-or-transformation test as one tool to analyze claims under 35 U.S.C. §101 provides some guidance to patent applicants and litigants. Second, the Court’s suggestion that the Federal Circuit develop “other limiting criteria” to analyze claims under §101 provides additional flexibility to develop tests more applicable to the life sciences, where the machine-or-transformation test is not particularly appropriate.

The Federal Circuit will have an opportunity to provide additional guidance in two pending cases: Prometheus Laboratories, Inc. v. Mayo Collaborative Services, No. 2008-1403, and Classen Immunotherapies, Inc. v. Biogen IDEC, Nos. 2006-1634 and 2006-1649.  The Prometheus and Classen cases were both remanded to the Federal Circuit for additional consideration in light of Bilski.   Read the rest of this entry »

PTO to Effectively Extend Provisional Applications to 24 Months

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

The United States Patent and Trademark Office will soon unveil a pilot program that is aimed at trying to provide inventors with some additional options with respect to moving from a filed provisional patent application to a nonprovisional patent application. USPTO Director David Kappos wrote about this in the November edition of Inventors Eye, see Providing Inventors More Time and Options. In some circles this pilot program has at times been characterized as providing for an extension of a provisional patent application to allow it to remain pending for twenty-four (24) months.  That is not technically an accurate way to articulate what the new pilot program will do, and for those who might want to avail themselves of the soon to be announced pilot program it is worth getting a handle on some of the finer details of the proposal. The effect could look like an extension of a provisional patent application, but there are special steps that must be followed.

The Kappos Administration at the Patent Office has been criticized in some circles for even pursuing this path because it is too complicated, but such criticism smacks of a healthy dose of condescension if you ask me.  It seems far too paternalistic to believe that inventors and small businesses are not savvy enough to figure out what they want and what they need.  After all, the idea of attempting to extend the effective life of a provisional patent application was proposed to Director Kappos by an inventor.   Read the rest of this entry »