Monthly Archives: September 2011

Submitting the Patentee’s Claim Construction in the Prosecution History

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Amended 35 USC §301 Citation of Prior Art and Written Statements now provides:

§301 Citation of Prior Art and Written Statements

(a) IN GENERAL.–Any person at any time may cite to the Office in writing–

(1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent; or

(2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.

(b) OFFICIAL FILE.–If the person citing prior art or written statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of the official file of the patent.

(c) ADDITIONAL INFORMATION.–A party that submits a written statement pursuant to subsection (a)(2) shall include any other documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement.

(d) LIMITATIONS.–A written statement submitted pursuant to subsection (a)(2), and additional information submitted pursuant to subsection (c), shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324. If any such written statement or additional information is subject to an applicable protective order, such statement or information shall be redacted to exclude information that is subject to that order.

(e) CONFIDENTIALITY.–Upon the written request of the person citing prior art or written statements pursuant to subsection (a), that person’s identity shall be excluded from the patent file and kept confidential.

Effective September 16, 2012, anyone (including the patent owner) will be able to cite in a patent file statements of a patent owner that were filed in a proceeding before a Federal court or the USPTO in which the patent owner took a position on the scope of any claim in the patent.  This submission can request in writing that his/her identity be kept confidential, and it will be excluded from the patent file.

The statute requires the submitter (i) explain the pertinence and manner of applying the patent owner’s written statement to at least one claim of the patent; and (ii) include any documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement.

New 35 U.S.C. §298 Limits the Effect of an Accused Infringer’s Failure to Obtain or Present Advice of Counsel

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New 35 U.S.C. §298 provides:

The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.

There is no specific effective date for this section, so it takes effect on September 16, 2012.

The statute merely prevents the failure to obtain an opinion of counsel or the failure to present an opinion of counsel to prove willful infrnigement or to prove inducement.  It does not prevent the introduction for other purposes, for example to show that increased damages or attorneys fees should be awarded after a finding of willfulness has been made.  Having a favorable opinion of counsel can also be valuable, because it can be introduced to show the absense of willfulness or the absence of inducement.  Furthermore the process of obtaining the opinion may result in changes that reduce the risk of an infringement claim in the first place.

 

 

New 35 U.S.C. §102 Implements a First-to-File-or-Disclose System in the U.S.

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New 35 U.S.C. §102, which will apply to applications claiming subject matter first diclosed in application filed on or after March 16, 2013, provides:

Sec. 102. Conditions for patentability; novelty

(a)    Novelty; Prior Art- A person shall be entitled to a patent unless—

1.    the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

2.    the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b)    Exceptions-

1.    DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION- A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

A.    the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

B.    the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

2.    DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS- A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–

A.    the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

B.    the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

C.    the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(c)    {CREATE ACT Save for later}

(d)    Patents and Published Applications Effective as Prior Art- For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

1.    if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

2.    if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.