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Archive for April, 2010

Not Your Father’s Patent Application, Part 3

by Orlando Lopez

Some might say that there is no object to today’s patent applications.  And they would be somewhat right.

While reading a patent application from 10-15 years ago, it was typical to find a number of objects of the invention.  Nowadays, if we listen to our litigator colleagues, we do not use the word invention.  Rather we use euphemisms like “these teachings.”  Also, you will rarely find objects of the invention in today’s patent application.  Again this is driven by the rulings of the CAFC (Court of Appeals for the Federal Circuit) in claim construction.  Given any indication that there’s only one invention, it is likely that the CAFC will restrict its claims to that invention (see for example, Edwards Lifesciences v. Cook, 582 F. 3d 1322 (Fed. Cir. 2009, stating that “when the preferred embodiment is described in the specification as the invention itself, the claims are not necessarily entitled to a scope broader than that embodiment”).  It is statements like this that make us shy away from using the word “invention.”  To which the inventor usually remarks, “but this is my invention!”  Not only do we shy away from using the word invention, but we also avoid the objects of the invention.

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Not Your Father’s Patent Application, Part 2

by Orlando Lopez

We continue in this posting, the discussion of the differences between today’s patent application and the patent applications of 10-15 years ago. A significant change is the construction of the summary.

Typically, the summary section of today’s patent application consists mainly of a rewrite of the independent claims.  This change in the patent applications is a result of the Federal Circuit decisions that give special importance in interpreting claims to sections of the patent application that describe the invention as a whole – the summary and the abstract (see for example, CR Bard et al. v. U.S. Surgical Corp., 388F. 3d 858 (Fed. Cir. 2004)).  However, the detailed description section should include a detailed description of one or more embodiments of the invention and not only a recital of the claims.

So in a well-written application, the fear that there are lurking problems (“hidden bombs” as one commentator called them) should be unfounded because, in addition to the recital of the claims in the summary, the detailed description must have enough details so that one skilled in the art (a term that patent attorneys use to describe one that is knowledgeable in the technical area of the patent application) would recognize the invention and would be able to, with some experimentation, re-create the invention (patent attorneys refer to these requirements as the written description and enablement requirements, as detailed in the Patent Statute).

So, although today’s patent applications read differently, they still meet all the requirements of a patent application.  Many applicants and inventors reply to this argument by stating that they do not intend to litigate their patents since they cannot afford to litigate. We will discuss this topic in future postings.


"Intellectuals solve problems, geniuses prevent them."
Albert Einstein


Not Your Father’s Patent Application, Part 1

by Orlando Lopez

Today’s patent applications read significantly different from the patent applications written 10 – 15 years ago.  While in the 80’s researchers would review each issue of the Official Gazette and obtain the patents of interest in order to obtain a view of the background of the field, today’s patent applications are significantly less useful as technical documents.

From the legal point of view, while my mentors used to say that you could start by reading the summary and the claims and looking at the figures to analyze a patent, in today’s patents and patent applications that statement would not be accurate. The background section of today’s patent application typically does not include the references to other patents and publications, which were found in the patents and patent applications of 10 – 15 years ago.

In today’s patent applications, the references to patents and publications are found in the information disclosure statement (a required list of all the patents, patent applications and publications that may be relevant to the examination of the patent application). This change was brought about by the perceived practices in patent examination and also ensures that those references have been considered by the Patent Office during examination.  Therefore, you can obtain the same information as to what was included in the background by reading the background together with the information disclosure statement in a patent application or by reading the background and the references cited by the applicant in a patent.


CAFC Weekly: April 9, 2010

by Bruce Jobse and Orlando Lopez

This week brings two cases related to questions that arise in many patent applications and that are faced by both small and large companies, but are of special interest to small companies-the question of inventorship and the question of reduction to practice.  The question of reduction to practice is important, not only because of the practice of “swearing back” (Didn’t your mother teach you not to swear?!), which is based on the first to invent patent system unique to the US (and indeed in danger of disappearing due to patent reform), but also because in SBIRs and other government contracts, reduction to practice has a particular significance in terms of government rights (more on that in a later post).  Rounding the week is a typical claim construction case.

In Vanderbilt University V. ICOS Corporation, the issue was whether three research scientists at Vanderbilt University were co-inventors on two patents (the patents where for compounds used to treat erectile dysfunction) where the research scientists had been consultant to a company but the name inventors and patents had worked independently from the research scientists.  The CAFC held that a group of co-inventors must collaborate and work together to collectively have a definite and permanent idea of the complete invention, and, that Vanderbilt failed to demonstrate by clear and convincing evidence that its scientists contributed to the claimed invention.  This CAFC decision provides an example of an inventorship contest, a fairly common quandary for patent owners.

In Yorkey v. Diab, an opinion that relates to an appeal from a decision in an interference, (as such, if the present patent reform is adopted, interferences would be if the US adopts the first to file system, a thing of the past), a good view is provided of what is necessary to establish reduction to practice (which also can have tax consequences-maybe we’ll do a post on that sometime).  Beside interferences, in the present patent statute, establishing the date of reduction to practice can be important in “swearing behind a reference” (although swearing is usually not good, “swearing behind” is the establishing that a reference was published or issued after the critical date with respect to the date of invention).

Finally, in Bid for Position, Llc. v. AOL, an opinion that relates to a decision on a claim of infringement against AOL and Google, in which the alleged infringing product was the Google Internet advertising system (what would be a day without Google?  However, we can do without the ads).  The lower court held that Google did not infringe and the CAFC upheld the lower court’s decision.  The opinion relates to the interpretation (claim construction) of the claims of the asserted patent.