Patent Law Practice Center

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.” (more…)

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.

Life in the Fast Lane – Use of the Patent Prosecution Highway

Michael Davitz, Partner at Axinn, Veltrop & Harkrider and  Practice Center Contributor, recently sent in this article he wrote with colleague’s Drew Schulte and Jia Li discussing the Patent Prosecution Highway and the value that can be achieved for those practitioners willing to explore the new program.

In July of 2006, the United States Patent and Trademark Office (USPTO) established a trial program with the Japanese Patent Office, where an applicant with an allowed claim in one office could fast track the examination of a corresponding application filed in the other patent office.  This program paved the way for what would become known as the Patent Prosecution Highway (PPH).[1] Today, the PPH includes patent offices in many of the world’s largest economies and is growing.[2] Despite the USPTO’s estimate of a 94% overall allowance rate for PPH applications as compared to 44% for non-PPH cases when the United States is the Office of Second Filing,[3] practitioners have continued to be wary of using the new program, especially when it comes to leveraging entire patent portfolios.[4]

In part, the hesitation to embrace the PPH reflects a legitimate fear of comparatively untested methods when it comes to patent prosecution. Although patent practitioners deal every day with cutting-edge technology, which innovates constantly, they are often reluctant to try new approaches as patent prosecution is fraught with dangerous liability.[5] However, for those practitioners willing to explore this new avenue, the PPH offers potentially great rewards in terms of easier and faster prosecutions which can provide value-added leverage for a client’s patent portfolios. (more…)

PLI’s Patent Law Institute Coming To A Location Near You!

PLI’s 5th Annual Patent Law Institute is on February 17-18 in New York (and via web) and on March 21-22 in San Francisco.  If you’re not joining us live in NYC or on the web, you can come here on Thursday February 17th at 9:15am to see a live stream of  former USPTO Deputy Director Sharon Barner’s keynote address to kick off the Insitute.

The Institute will cover the practice impact of recent developments on all three sub-groups in the patent law community: patent prosecutors, patent litigators, and strategic &transactional lawyers. The two-day schedule includes six one-hour plenary sessions of broad interest to patent lawyers and a separate breakout track for prosecution, litigationandstrategic & transactional practices. Each track features six one-hour breakout sessions focused on each of the three patent practice sub-groups.

Plenary sessions include:

• USPTO Keynote Address by USPTO Deputy Director Sharon R. Barner
• Understand the practice impact of recent Supreme Court and Federal Circuit decisions
• Learn the latest on the lower court’s reactions to the Supreme Court’s Bilski decision from a panel of experts
• Master the changes at the USPTO and how to manage client expectations
• Corporate counsel divulge the patent issues that keep them awake at night
• A distinguished panel of federal judges share their perspective on critical patent litigation issues
• Earn one hour of ethics credit

Federal Circuit Keeps Door Open For New Evidence In Section 145 Actions

Jeanne Gills, Partner at Foley & Lardner and Practice Center Contributor, sent along an article she wrote with colleagues, Stephen B. Maebius and Courtenay C. Brinckerhoff discussing the  recent Federal Circuit decision in the Hyatt v. Kappos en banc re-hearing.

On Monday, November 8, 2010, the Federal Circuit issued its decision in the en banc re-hearing of Hyatt v. Kappos (No. 2007-1066)). The en banc Court departed from the August 11, 2009 panel decision and held that a patent applicant may introduce new evidence against the USPTO in a district court action under 35 USC § 145 (“Civil Action to Obtain a Patent”) provided such evidence relates to issues that were raised before the USPTO. This decision will be welcomed by patent applicants who have received negative USPTO decisions on patentability, and reflects the realities—and difficulties—of marshalling evidence during patent prosecution. For additional background on the appeal, see Hyatt v. Kappos: Will a Bad Case Make Bad Law?.

The Panel Decision

After the USPTO Board of Patent Appeals and Interferences affirmed certain rejections of his patent application claims, Mr. Hyatt filed an action in the U.S. District Court for the District of Columbia under 35 USC § 145. To support his claim for a patent, Mr. Hyatt submitted a declaration to address the rejections. The district court granted the USPTO’s motion to exclude the declaration because Mr. Hyatt had been negligent in not submitting it during the USPTO proceedings. (more…)