The Patentability Black Hole

Inventors in the unpredictable arts often have to face an unpredictable paradox when patenting an invention.  There seems to be a disconnect between requirements for an inventor to disclose an invention versus the prior art to render an invention unpatentable. Fenwick & West refer to this as the “patentability black hole”.  In this article, Fenwick & West discuss this dilemma and how to solve this patent law paradox.

An inventor faces a number of significant hurdles and pitfalls in patenting his invention. Having a patent specification providing proper and sufficiently thorough disclosure of the invention being claimed by the patentee can, by itself, be a large hurdle, especially in the biosciences where experimental data is essential. Section 112, first paragraph, of Title 35 of the United States Code sets forth the disclosure requirements that all patentees must meet. This section is commonly interpreted as requiring that a patent specification contain a full written description showing that the inventor was in possession of the claimed invention at the time the patent application was filed (the “written description” requirement) and that a patent specification enable a person of ordinary skill in the relevant field to make and use the invention based on the specification (the “enablement” requirement). See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Company, 598 F.3d 1336, 1340 (2010). (more…)

What’s Wrong with Reexamination and How to Make it Better

Gene Quinn, of IPWatchdog and Practice Center Contributor, sent in this article discussing why reexamination should absolutely be considered when there is a strong case of invalidity that is built upon prior patents or publications and what the Patent Office is doing now with respect to reexamination.

Reexamination is a low-cost but seldom used alternative to litigation for determining the patentability of the claims in an issued patent. Despite what I write below, I am a fan of reexamination and I think that the fears associated with the process are largely unfounded.  Reexamination could and should be used more often than it is, and if you are a defendant in an ongoing patent infringement litigation and you are not simultaneously involved in bringing a reexamination you need to ask yourself why not!

Yes, the reexamination process is slow.  Yes, the reexamination process doesn’t work as well as it could or should.  Yes, reexamination it adds extra cost.  But the statistics don’t lie.  In the right case reexamination is extremely effective.  Unfortunately, some patent litigators counsel clients to steer clear of reexamination.  This may be good advice, or it might just be because the litigator isn’t familiar with reexamination, or in some cases because you recommend what you know and do.  The old saying — if you are a hammer all the world looks like a nail — comes to mind.  So despite what follows relating to how Congress could and should make reexamination better, if you are on the wrong side of a patent infringement litigation you really should get some impartial advice about the pros and cons of pursuing a reexamination strategy before writing it off as a bad idea.

Click here to read the full IPWatchdog publication.

Patent Community Weighs in On The Therasense Decision And It’s Implications

The Federal Circuit’s Therasense, Inc. v. Becton, Dickinson & Co., decision has certainly instigated a huge amount of commentary and debate amongst the patent community.  Will the heightened standards resolve the problems associated with practitioners “disclosing too much prior art of marginal relevance” or actually reduce the number of inequitable conduct claims that are filed?  R. David Donoghue, Partner at  Holland & Knight and Practice Center Contributor, sent in this article he wrote entitled Federal Circuit Heightens Inequitable Conduct Standards, But Does it Increase Unethical Behavior? where he weighs in on decision.

Yesterday, the Federal Circuit handed down its anticipated en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., increasing the standards for inequitable conduct.  The 6-5 majority held that:

1. an omitted reference is material only if the claim or patent would not have issued, but for omission of the reference;
2. specific intent to deceive must be shown by clear and convincing evidence;
3. courts can no longer employ a “sliding scale” of intent and materiality, both must be showng by clear and convincing evidence; and
4. courts should apply equity to ensure that the remedy is not based upon conduct “immaterial to the issuance of the patent.”  (more…)

Join Us For Prior Art & Obviousness 2011 June 6, 2011

Prior art, 35 USC 102, continues to be a complicated concept for patent practitioners and their clients, undergoing evolving interpretations in the PTO and CAFC and even statutory reform. For every practitioner, it is a necessity to stay current on this touchstone of patentability. How does the concept of “prior art” and circumstance collide in the 21st century? How does prior art on the web impact the practice? What is here today, could be gone tomorrow, but can possibly be recovered mean in terms of prior art. And, in the age of biotech and nanotech, what is truly enabled? Is it a catalog listing, or even a peer review paper? Join us for PLI’s Prior Art & Obviousness 2011 on June 6, 2011 in New York or on July 25, 2001 in San Francisco (also available via live webcast) where you will obtain an essential working understanding of this complicated statute, including recent re-interpretations, case law, and a look at enacted or proposed statutory revisions. And let’s not overlook the most common reason any application is rejected or patent held invalid: 35 USC 103, Obviousness. KSR (already 4 years old) will be explored from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSRpigeon hole!

Click here for more information on Prior Art & Obviousness 2011: Current Trends in Sections 102 & 103.

We will have highlights here on the Practice Center so tune in if you can’t make the program!!

Cost Benefits Of Concurrent Patent Reexamination

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

Court Lists Practical Efficiencies of Patent Reexamination

In attempting to stave off a motion to a district court litigation pending patent reexamination, the opposing party (almost always the Patentee) will often characterize a parallel patent reexamination as an “all or nothing proposition.” That is to say, in the face of the argument that the patent reexamination is likely to simplify issues for trial (almost always a defendant argument), the opponent will insist that USPTO statistics demonstrate that it is very unlikely that all claims will be canceled.

In Genzyme Corp., v Cobrek Pharmaceuticals Inc., (NDIL, Order 2/17/11), the relatively rare case of a Patentee requested stay was at issue. In deciding to stay the district court proceeding based on the familiar factor based analysis, the court found that simplification of issues was likely. In doing so, the court created a list of discovery efficiencies, potential cost savings, and case management benefits to be gained from awaiting the outcome of the USPTO action. (more…)