Two things you didn’t expect when you went in-house March 20, 2013Posted by Brian Schar in General.
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A lot of ink has been spilled over the years about the transition from law firm to in-house practice. However, there are two aspects of in-house practice that usually get overlooked.
The first is that you will be the first lawyer that most of your co-workers have ever met, if you are at a small to medium-sized company. All they know about lawyers is what they see on TV or read in the paper – and most of that isn’t particularly positive. A percentage of your co-workers actively will be wary or scared of you at first. Part of your job is to be a good ambassador for the profession. Be nice. Be professional and pleasant. Make conversation. Make jokes. Act like a human being. That will break down the walls and help you fit in to a business environment quickly and effectively.
Second, after they get to know you and realize you are an OK person, you will start to get requests for referrals. As the only lawyer many of your co-workers know – particularly the lower-paid ones – you are their on-ramp onto the chaotic freeway of the legal system. They don’t have any idea how to pick a lawyer. It’s a good idea to connect with friends from law school, or trusted colleagues, and have a few different folks on deck for recommendations. The ones you’ll be asked about most will be personal injury, divorce/family law, criminal law, and immigration. It will behoove you to have a recommendation or two handy for lawyers in at least those specialties.
However, I do recommend not referring your co-workers to employment plaintiff’s counsel!
A mortal wounding of McKesson January 31, 2013Posted by Brian Schar in Federal Circuit, General, Patent prosecution.
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After the McKesson decision, many patent attorneys, including myself, thought the IDS armageddon would soon arrive. McKesson arguably required the applicant to submit in a particular application references from all related applications, as well as office actions from those cases if the claims therein were sufficiently similar to those in the particular application. At a minimum, related applications would include any case (US or foreign) that claims priority to the particular application at issue.
As time progressed, I was surprised to find that this particular rationale for finding inequitable conduct – failure to submit office actions from related applications – was not applied routinely by the Federal Circuit. My position evolved to one in which McKesson was limited to its facts.
Now, post-Therasense, last fall’s precedential Federal Circuit decision in 1st Media v. Electronic Arts may have slain McKesson without mentioning it by name. In 1st Media, the applicant’s attorney failed to submit art in a US application that had been cited as “Y” art (that is, obviousness art) in the corresponding application pending at the European Patent Office. The attorney also failed to cross-cite art among different pending US applications in the same family. The reason given was that the attorney had recently set up a solo practice out of his home, which was “very active,” and the citations were missed.
The Federal Circuit assumed that the art that was not cross-cited within the family was material. (p. 14). Turning to the second prong of Therasense, the Court then stated:
Knowledge of the reference and knowledge of materiality alone are insufficient after Therasense to show an intent to deceive. Moreover, it is not enough to argue careless-ness, lack of attention, poor docketing or cross-referencing, or anything else that might be considered negligent or even grossly negligent. To sustain a charge of inequitable conduct, ‘clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.’” (pp. 12-13).
Thus, even under facts very similar to those of McKesson, absent proof of a deliberate decision to withhold a known material reference, the failure to cross-cite references and office actions within a family is not inequitable conduct.
While the Federal Circuit did not even mention McKesson, by addressing the second, intent prong of Therasense, 1st Media has declawed the fierce beast that McKesson used to be.
Hindsight is not 20/20 January 16, 2013Posted by Brian Schar in Patent prosecution, USPTO.
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The recently-decided PTAB appeal Ex parte Windsheimer is not precedential. However, at page 3 of the opinion, there is an excellent one-sentence summary of the state of the law as to hindsight and obviousness:
“The fact finder must be aware ‘of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.’ KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (warning against a “temptation to read into the prior art the teachings of the invention in issue”)).”
I am inclined to cut and paste this very sentence into virtually every appeal brief I write, as I couldn’t have said it better myself.
2012 in review January 3, 2013Posted by Brian Schar in General.
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The WordPress.com stats helper monkeys prepared a 2012 annual report for this blog.
Here’s an excerpt:
600 people reached the top of Mt. Everest in 2012. This blog got about 7,200 views in 2012. If every person who reached the top of Mt. Everest viewed this blog, it would have taken 12 years to get that many views.
How to Respond to an Office Action, Part 1: Should You Respond at All? September 19, 2012Posted by Brian Schar in Patent prosecution.
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Before starting to write a response to an office action, you should consider whether you should respond at all.
In many, if not most, art units the first office action won’t be generated until 2-4 years after the application has been filed. In those 2-4 years, the business of your client will have changed, in some cases substantially. The initial excitement over a new invention will have worn off, and that invention may be no longer within the core business of your client. It may have been researched further, and found to be uneconomic, or hard to produce, or hard to market. That patent application you filed may have been directed to a feature of a product that is no longer part of the product, or directed to a proposed feature of a product that was never implemented. The product itself may have been discontinued or abandoned.
None of these scenarios are uncommon. They are the nature of business, particularly fast-moving innovation-driven business that understands the importance of patents and IP.
Before writing an office action response, ask the following questions of your client; you may already know the answers if you are in-house:
- Do the claims cover a product the client is making? (i.e., do the claims have any defensive value?)
- Do the claims cover a product that a competitor is selling? (i.e., do the claims have any offensive value?)
- Are the claims directed to a product improvement that the client is serious about implementing?
- Are the claims directed to a product improvement that could be used to block a competitor from using that improvement?
If the answers to all of those questions are “no,” then you should have a talk with your client about just letting the application go. That can be hard for a client to hear; the temptation for them is to proceed “just in case.” In addition, if you’re deep into prosecution, a client can focus too much on the sunk costs of prosecution that has already occurred. At the end of the day, it’s the client’s decision whether to proceed or not. However, it’s your job to make sure the client has all of the information needed to make a decision.
Another argument against obviousness September 17, 2012Posted by Brian Schar in Federal Circuit, Patent prosecution.
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As I catch up on recent Federal Circuit precedential decisions, I was struck by this piece of analysis in Kinetic Concepts v. Smith and Nephew:
“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.” (at page 46)
The Federal Circuit seems to be saying that, if the prior art teaches two devices that are effective for a particular purpose, there is no rationale for combining those devices in order to accomplish a different purpose. That is, if A and B are equally effective at solving problem X, then there is no reason to combine them to solve problem X, or a different problem Z not mentioned in either reference. I need to think about this one some more, but nevertheless I do think that this Kinetic Concepts argument against combining references may be just as useful as the major MPEP 2143.01 arguments.
Blog status August 8, 2012Posted by Brian Schar in General.
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I took a new job in April, changing industries from medical device to LED phosphor. As you might imagine, I’ve been busy. Now that I have wrapped my arms around the duties of my new position, I will have more time to actually post to this blog again.
Coming up soon, I am planning a series of articles about how to respond to office actions. If you’re reading this blog, it’s probably something you’ll have an interest in.
Field of the invention, and analogous art August 8, 2012Posted by Brian Schar in General.
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The BPAI issued a nonprecedential opinion today in Ex parte Bo Xia. The applicants’ Field of the Invention was detailed but not particularly limiting vis a vis the contents of their claims. The Field was directed to bonding galvanized surfaces. The Board found that, based on the Field, a patent directed to pigment emulsion was not analogous art and could not be used in an obviousness rejection. This is a great example of how a properly-crafted Field of the Invention can be nonlimiting and also can be tremendously useful in overcoming 103 rejections.
SIPO April 5, 2012Posted by Brian Schar in General.
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I am always struck by how similar the logo of the State Intellectual Property Office of the PRC is to the communicator/Starfleet insignia of Star Trek: The Next Generation.
Then I am always amazed at how much of a geek I am.
Breaking is unreasonable March 19, 2012Posted by Brian Schar in Patent prosecution, USPTO.
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Some Examiners will issue a rejection over a particular piece of art claiming that, if you broke it, it would meet the limitations of the claim. The applicants in Ex parte Kevin W. Smith et. al. faced that problem. They claimed a “passive” articulation joint – that is, an articulation joint with a particular mechanical property of being passive. The Examiner rejected the claims utilizing that language as anticipated by Schulze, arguing that if one applied enough force, the end effector could be “moved or articulated,” “even if such an action would damage the device.” The BPAI reversed, finding that “the Examiner’s interpretation essentially disregards the term ‘passive.’” Further, the BPAI found that interpretation of the claim term “overly broad.” Keep this in mind the next time you receive a rejection in which the USPTO contends that a reference anticipates, if only you destroy it first.