Archive for May, 2011

Therasense Makes Sense of Inequitable Conduct Defense

Friday, May 27th, 2011

viagra online canadah=”150″ height=”150″ />On May 25th, the Federal Circuit, sitting en banc, issued a decision reversing and remanded the district court’s holding that the patent-in-suit was invalid due to inequitable conduct. (A copy of the decision can be found at the end of this post.) The patent remained invalid as anticipated, but the bar has been substantially raised for accused infringers attempting to prove the inequitable conduct defense – the “atomic bomb” of patent law, as Chief Judge Rader described it. With respect to the element of intent, the accused infringer must prove by clear and convincing evidence that the patentee acted with specific intent to deceive the PTO. “The accused infringer must prove…that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.” Intent can still be established by circumstantial evidence, but a high level of materiality cannot satisfy the burden to prove intent. Also, the evidence “must be sufficient to require a finding of deceitful intent in the light of all the circumstances….The absence of a good faith explanation for withholding a material reference does not, by itself, prove intent to deceive.”


AIPLA Chem Practice “Road Show” Back On Track

Monday, May 23rd, 2011

On June 23, 2011, the AIPLA Chemical Patent Practice Road Show will go on in Chicago, emphasizing prosecution and litigation strategies, in both patent drafting and opinion work. Apart from the expertise of the speakers, which is uniformly high, these seminars tend to be a bargain compared with the price so many of the commercial CLE providers charge for programs that are as short as one day. I, along with my partner Dan Kluth, Rochelle Seide, and a few others (Lisa Dolak was often roped into doing the ethics portion for both audiences), revived an even earlier version of this concept which, on the chemical side, was entitled “Basic Chemical and Biotechnology Patent Practice Seminar.” Both the Chemical Group and the Computer Law Group organized one, to try to maximize the total audience. Then we really hit the road, doing three one-day sessions in 1994, 1996, 1998 and 2000 in three cities – East Coast, Midwest or South, and West Coast – in a relatively short period of time. Not everyone did all three cities, but some of us did! It was hard work for the AIPLA staffers, but they always came through, and we all really felt like a “band on the run” by the time the last one was over.

AIPLA Chemical Patent Practice Road Show

Decision of the EPO Enlarged Board of Appeal – Sexual Crossing and Selection of Plants is Not Patentable Even When Using DNA Markers

Wednesday, May 18th, 2011

The following is a contribution from Verena Simpson PhD of Zacco Denmark A/S.

G 0001/08

The core of the Decision

1. A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being “essentially biological” within the meaning of Article 53(b) EPC.

2. Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genome of plants or of subsequently selecting plants.

What triggered the Enlarged Board of Appeal [EBoA] Decision?

The Technical Board of Appeal [TBoA] were faced with the task of deciding whether an opposed patent EP1 069 816 should be maintained in amended form. The claims were directed to “a method of producing Brassica oleracea with elevated levels of glucosinolates” comprising steps of crossing selected wild Brassica oleracea species with broccoli breeding lines; selecting hybrids with elevated of glucosinolate levels; backcrossing the selected line; and finally selecting a broccoli line with elevated of glucosinolate levels, where molecular markers are employed to select the desired hybrids.

The sole question faced by the TBoA (T 83/05) was whether the claimed “method” was excluded from patentability under Art 53b EPC and Rule 26(5) EPC2000.


Patent Office Broadens “First Action Interview” Pilot Program

Wednesday, May 18th, 2011

On May  17, 2011, the Patent Office issued a press release and guidelines that effectively permit applicants with pending applications in all art areas to request—and be granted– an interview with the Examiner prior to the first office action.  Of course, there are strings attached in terms of number of claims, restriction without traverse if multiple invention, etc. Also, upon request the Examiner – when the application is taken up for action – will issue of Pre-Interview Communication, citing relevant art from a search and indicating potential rejections or objections. Prior to the interview, the applicant must file proposed amendments and remarks, if applicant decides to proceed with the interview.

Note that this program does not decrease the time from filing to first office action, and seems to require a lot of work by both parties before any “face-to-face” discussions can occur. Since the Examiner has to both search and formulate rejections/objections prior to scheduling the interview, this sound more like an interview-by-right after a first office action  which, of course, we practitioners already have. The guidelines do guarantee that both parties will be prepared prior to the interview, and certainly that is of some value. However, if agreement is not reached, the Examiner can hand the application a “First Action Interview Office Action”. The applicant only gets 30 days to reply (“with limited extension of time”). But there are other options all along the way, so I recommend reading the detailed PTO Guidelines before jumping into this program.  Finally, I did not see that this procedure completely supplants an Examiner’s ability to grant a request for a “normal” pre-first action interview which, in my experience, many examiners in Group 1600 are willing to permit. So, apparently, both applicants and Examiners can “opt out” of this program.