Patent Law Practice Center

Navigating the Best Mode Requirement

Written by Michael Davitz M.D. J.D. (Partner at Axinn, Veltrop, & Harkrider, L.L.P. and one of our newest Practice Center Contributors)and Elizabeth Retersdorf J.D. (Associate at Axinn, Veltrop, & Harkrider,LLP) 

            The Patent Act provides that the patent specification “shall set forth the best mode contemplated by the inventor of carrying out his invention.”[1]  This requirement, also known as the best mode requirement, is in essence a quid pro quo with the inventor.  In return for granting the right to exclude others from making or using a patented invention, the inventor must disclose or conversely not conceal from the public the preferred embodiment.  But, what constitutes the preferred embodiment, how much information actually needs to be disclosed, what can be withheld and what happens when the inventor is not aware of the best mode?  The recent case law provides some answers to these questions, but also raises other concerns, especially as we enter the brave new era of biosimilars and the inevitable wave of litigation that will likely ensue.

            In order to satisfy the best mode requirement, the inventor must disclose the preferred embodiment of his invention as well as any preferences that could materially affect the invention.[2]  The first step in a best mode inquiry begins, as is always the case with patent law, with the claims.[3]  This past March the Federal Circuit handed down a decision in Ajinomoto Co. v. ITC where the scope of the claims created a problem for the inventors.[4] Read the rest of this entry »

There is No Prior Art for My Invention

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

I frequently am told by inventors that they have searched the marketplace and cannot find anything like their invention. I am also frequently told that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art that needs to be considered. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art.  Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art.  Even the greatest American inventor, Thomas Edison, faced prior art for the vast majority of his inventions.

Prior art is probably best understood as information that can be used by the patent examiner to reject claims in a patent application. This information is most commonly prior publications, such as technical articles, issued patents or published patent applications. It is also possible for prior art to consist of actions, such as a sale within the United States more than 12 months prior to a patent application being filed, or public use in the United States more than 12 months prior to a patent application being file. For more on this see What is Prior Art? Read the rest of this entry »

Reexamination Request Against Taser Patent Among Those Filed Week of October 11th

Here is the latest  installment of Reexamination Requests from our friends at Reexamination Alert….

The clear stand-out among the reexamination requests filed last week was one against U.S. Patent No. 6,999,295, the patent for the famous Taser® stun gun, owned by Taser International.  The preamble of one of the ‘295 claims euphemistically recites a “dual operating mode electronic disabling device for immobilizing a target.”  Taser successfully sued Stinger Systems in Arizona for infringement of the ‘295 patent, culminating in an infringement judgment in August.  Taser owns another patent, U.S. Patent No. 7,102,870, claim 3 of which has been held to be invalid as obvious over the prior art.

A request was also filed against Apple’s U.S. Patent No. 5,946,647 (Ex parte No. 10).  As reported by our friend Gene Quinn in IPWatchdog, Apple has sued HTC and Exeda for infringement of the ‘647 patent, among many other patents. Read the rest of this entry »

U.S. Design Patent Considerations For Chinese Companies

The following guest post was written by Foley & Lardner Partner Marshall J. Brown.

Like industrial design registrations and design patents in many countries, U.S.design patents can serve as an effective tool to prevent competitors, counterfeiters, and other parties from copying your company’s proprietary designs. While the process for obtaining a U.S. design patent is fairly straightforward, there are several aspects to design patents that are unique to the United States. Many of these features provide applicants and patent holders with valuable benefits not available elsewhere, while others place particular burdens on inventors and attorneys. These issues need to be recognized when maneuvering through the process of obtaining a design patent. The following discussion focuses on a few of the aspects unique to the U.S. design patent system.

1. The 12-month grace period. A U.S. design patent application may be filed up to 12 months after the design is first described in a printed publication, is in public use in the United States, or is offered for sale in the United States. This provides companies with the opportunity to determine whether a product will be sufficiently successful to warrant the investment in a U.S.design patent. Read the rest of this entry »

Bilski’s Impact on Finance Industry Patents

The following was written by Dale Lazar (Partner at DLA Piper and one of our newest Practice Center Contributor’s)  and Jim Heintz (Partner at DLA Piper).

When the Supreme Court announced it would hear the Bilski case, many speculated that the Court would use the opportunity to declare an end to patents on business methods. This did not happen. However, the Court did find that Bilski’s claims to a method for hedging risk were not the kind of invention for which a patent should be granted.

What does this mean for other finance industry patents and patent applications? Certain types of business method patents may be safe for now – but warning signs point to hazards down the road.

Most would agree that the claims of Bilski’s patent application are directed toward a business method. Two aspects of the Supreme Court’s Bilski decision are particularly important to the issue of whether finance industry inventions can be protected by patents: (1) business methods are not categorically excluded from patent protection; but (2) Bilski’s claims to methods for hedging risk are unpatentable because they claim an “abstract idea.” Read the rest of this entry »