Patent Law Practice Center

The Best of the Post-Grant USPTO Proceedings Seminar

In case you missed it, PLI hosted a seminar entitled Post-Grant USPTO Proceedings 2012- The New Patent Litigation and the topics discussed by the day’s panelists proved to serve as both a refresher on the language of the new law as well as an enlightening course on what the developments in practice have and will become. If there was a trend throughout the day, it would be that patent professionals need to become familiarized with the changes in patent law in order to streamline their time and resources into more efficient patent applications and to facilitate  the litigation process. Requirements that had become common place in patent law are no longer on the books, but a patent practitioner would not know this unless they studied the America Invents Act provision by provision – or unless they attended PLI’s seminar.

To show you the range of topics that were discussed, here are some of the highlights from each panel of the seminar. The course handbook is still available, and the video recording of the entire seminar will be made available soon for On Demand viewing on the PLI website. (more…)

Top 5 PLI Patent Law Posts of the Year

Every Friday, the Patent Law Practice Center likes to provide our readers with highlights from the week’s best patent law blog posts and articles. As 2011 reaches its end, and as the new year causes people to look back on the year that was, we thought it was a great opportunity to present to you the Patent Law Practice Center’s top 5 posts of the year:

1) America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice, Parts 1 & 2: Explanations provided by Robert A. Armitage of Eli Lilly and Company, and Janet Gongola, Patent Reform Coordinator at the USPTO, helped in breaking down the AIA for the masses.

2) A New Doctrine of Equivalents? CAFC Defines “Use” Under §271 – Written by Gene Quinn, of IPWatchdog and Practice Center Contributor, this post discusses Centillion Data Systems, LLC v. Qwest Communications International, Inc., and questions whether it will “breathe new life into the doctrine of equivalents” given the Court’s determination of the meaning of “use” of a system as a matter of law under 35 U.S.C. 271 (a). (more…)

America Invents: A Simple Guide to Patent Reform, Part 2

Written by Gene Quinn, of IPWatchdog and Practice Center Contributor.

I have done quite a bit of writing about the America Invents Act, but I have been a bit derelict in providing the sequel to America Invents: A Simple Guide to Patent Reform, Part 1. Part of the reason, if not the entirety of the reason, is that the major parts of the American Invents Act that remain are anything but simple.

I was speaking with John White via telephone yesterday about the America Invents Act.  Yes, John and I are thoroughly immersed in this legislation and coming up with wrinkle after wrinkle that you probably never thought about.  Fun I know, but that is what two wild, crazy and tremendously charismatic patent attorneys talk about!  In any event, I told him I was having difficulty and asked him — how do you describe prior user rights, post-grant review and supplemental examination simply?  His response: “You don’t.”  We went on to talk about how first to file isn’t all that simple either, although the name suggests otherwise.  This thing, the monstrosity that is the America Invents Act, will be a full employment act for lawyers!  But when is it ever good for clients when it is good for the attorneys?

In any event, on this note I embark upon Part 2, which will seek to make sense of prior user rights, post-grant review, preissuance submission and patentability changes. This will leave inter partes review, supplemental examination and derivation proceedings for the finale — Part 3.  I will endeavor to describe these in the most straight forward way possible, but I am going to completely punt on Section 18 as it pertains to business methods and post-grant review, at least for now.  I just see no way to explain that in a “simple” way.  Notwithstanding, look for an article on Section 18 soon (a relative term I know), along with an article about specific peculiarities and likely unintended consequences of the Act.

Click here for Gene Quinn’s full article on IPWatchdog.

Patentee’s Arguments in Reexamination Create Intervening Rights Erasing $29.4 Million Verdict

Scott Daniels, Partner at Westerman, Hattori, Daniels & Adrian and Practice Center Contributor, sent in this article discussing Tuesday’s CAFC decision in the Marine Polymer Techs. v. HemCon case. In a decision that seems to encourage reexamination, the Court held that “intervening rights” apply to unamended claims based on statements made during reexamination.  Daniels discusses the history of the case and highlights the key points of the CAFC decision.

The CAFC panel decision [Tuesday] in Marine Polymer Techs. v. HemCon will do more to popularize reexamination than all the proselytizing by all the reexamination lawyers and bloggers ever could.  The Court held that an argument made by the patentee traversing a rejection in reexamination constituted a disclaimer of patented subject matter; this disclaimer triggered absolute intervening rights for the accused infringer under 35 U.S.C. §§ 252 and 307(b), thereby eliminating all damages for the period before the issuance of the reexamination certificate.  The Court also suggested that the accused infringer might also be protected by equitable intervening rights for the period after issuance of the reexamination certificate and sent the case back to the trial court for further fact-finding. (more…)

Patent Litigation Forum Shopping in the EU

Our friends at DLA Piper sent in this article discussing the current European patent system and how unfortunately the goal of consistent interpretation throughout member states is not always achieved.

A granted European patent provides the owner with a bundle of independent, national patent rights for those EU member states in which the patent has been validated. Once the period for the centralized procedure has passed, patents are generally enforced or revoked at a national level. In some national courts (for instance, the UK and the Netherlands), validity and infringement proceedings are commonly heard together, whereas other nations (notably, Germany) have separate courts to determine validity and infringement.

The European Patent Convention provides the central legal framework and sets out the substantive basis for determining ownership, patentability and infringement for European patents. The Protocol to Article 69 of the EPC provides some guidance; however, interpretation of substantive issues is left to the national courts. Although the goal is consistent interpretation throughout member states, individual national courts apply the principles differently. (more…)