Posts Tagged ‘AIA’

Canada’s ‘’Sister” Prior Art Law Differs From Ours, Eh!

Tuesday, October 29th, 2013

I recently received a well-written post from Smart & Biggar/Feherstonhaugh in Toronto reminding me that a publication by the inventor only shields a later third-party publication from being a bar if the second publication was derived from the inventor and a Canadian application – not a U.S. application—is filed by the inventor within a year of the inventor’s publication. This is not the same as the AIA provisions that allow a publication by the first inventor to avoid the prior art effect of a second publication of the invention, made by a third-party, so long as the first inventor files anywhere within a year of his/her publication.

You can find the entire post here.

Hamilton Beach v. Sunbeam Products – “On Sale” Bar Clarified

Thursday, August 15th, 2013

On Wednesday August 14th, a divided  Fed. Cir. panel affirmed the invalidation of Hamilton Beach’s portable slow cooker under the “on-sale” or “in public use” bars of s. 102(b). Hamilton Beach Brands v. Sunbeam Prods., Inc., Appeal No. 2012-1581 (Fed. Cir. Aug. 14, 2013). (A copy of the decision is available at the end of this post.) Hamilton Beach had ordered 2000 of the cookers from an overseas’ supplier prior to the critical date (one year prior to the effective filing date of the application that claimed the purchased version of the cooker). The majority found that the offer to sell made by the supplier activated the on-sale bar of 102(b), and that the hoary “experimental use” exception does not apply since the cookers were ready for patenting. The dissenting member of the panel felt that the experimental use exception should apply since the sale did not meet the standards for a “commercial sale.”

Interesting, as noted by at least one commentator, under AIA’s 102(b) exception to the on-sale bar of 102(a)(1), if the disclosure (the sale) had been made within a year of filing, the exception would apply, since the seller obtained the subject matter directly from the inventors, via Sunbeam.  However, the purchase would still be a bar if it fell outside the grace period.

I know that this is not anything like a big change in biotech/pharma patent law, but it is a very good review of the on sale bar and the experimental use exception to the bar.


Marks & Clerk Releases Life Sciences 2013 Report

Monday, April 22nd, 2013

On Monday, the international law firm Marks & Clerk released it’s 2013 Life Sciences Report at the BIO International Convention in Chicago. This 50-plus page report is wide-ranging, containing both the views of life science leaders on marketplace issues like funding for new ventures (not favorable) and other trends in the pharma/biotech industry (more mergers and joint ventures). Although these opinion survey results are of some interest, particularly the focus on the AIA, SPCs and biosimilars, the “meat” of the report is Marks & Clerk’s attempt to summarize major IP trends in both the US (not good for diagnostics), the EP (not good for stem cells), Australia (scope of prior art broadened), India (compulsory licenses and attempts to clarify biotech patent standards) and even Thailand and Hong Kong. I think that  all of us working in the life sciences space should give this report at least a quick look – It is an ambitious and largely successful attempt to summarize “the year in IP law and business worldwide.”

2013 Life Sciences Report


USPTO Publishes Extensive Examination Guidelines for 35 U.S.C. 102 and 103

Thursday, February 14th, 2013

On February 14, 2013, the PTO published extensive Examination Guidelines for examination of applications filed after March 16, 2013, under 102 and 103 as amended by the AIA. Given the debates, if not confusion, that arose following the publication of the proposed rules with public comments regarding certain provisions of 102, these guidelines should provide some clarity as we prepare to go “out of the gate” after March 16th. Pay particular attention to the last section, which discusses “transition applications.” Happy Valentine’s Day!

Examination Guidelines