Patent Attorneys' Discussion Thread...

[Guisslapp]

Insteading of ruining Houston Techsan's thread, I decided to start a new one. Any reactions to the recent Ariad decision? We filed an Amicus Brief in the case on behalf of IPO, so it has been a popular subject at my firm.

[Houston Techsan]

Just had a quick read of Ariad since I wasn't familiar with it. I can agree with the holding. My problem is that now the CAFC is narrowing claim construction too much and leaving no leeway for the doctrine of equivalents. So if the description is specific enough, will the court interpret the claim to include the disclosure? My associate and I have had a running argument over this. Say if in a process only one catalyst (say a spherically shaped cobalt oxide/molybdenum oxide catalyst) is used in all examples, and the claims say a hydrogenation (or whatever but not specific) catalyst, will the court limit the claim to the only catalyst described?

[Guisslapp]

It could be even worse - the court may find the claim entirely invalid for lacking written description. I am not sure that Ariad changes the law of written description or "best practices" for prosecution. If you want to demonstrate possession of the invention, you need to provide ample meat in the specification. For composition claims, make sure you provide adequate description of different species, particularly in unpredictable fields. For written description purposes, it is better to provide analysis of "why" something is believed to work (even though that may raise other problems), because you may be able to point to your theory to show that you had possession of the species that would work the same, in theory.

I think it raises questions about the value of provisional applications. If you want to have the benefit of the filing date, you probably want to have some claims to demonstrate possession of the invention as of the filing date of the provisional.

[mikedog]

It could be even worse - the court may find the claim entirely invalid for lacking written description. I am not sure that Ariad changes the law of written description or "best practices" for prosecution. If you want to demonstrate possession of the invention, you need to provide ample meat in the specification. For composition claims, make sure you provide adequate description of different species, particularly in unpredictable fields. For written description purposes, it is better to provide analysis of "why" something is believed to work (even though that may raise other problems), because you may be able to point to your theory to show that you had possession of the species that would work the same, in theory.

I think it raises questions about the value of provisional applications. If you want to have the benefit of the filing date, you probably want to have some claims to demonstrate possession of the invention as of the filing date of the provisional.

I've only read a summary of the Ariad decision. Reading the entire opinion is on my to-do list.

With that disclaimer out of the way, I wouldn't think that a court would find the example claim to be entirely invalid for lacking written description unless the claim at issue was added during prosecution. If the claim was included in the original application, you might have enablement issues, but the claim would be self-supporting for written description purposes, correct?

[Guisslapp]

If the claim was included in the original application, you might have enablement issues, but the claim would be self-supporting for written description purposes, correct?

Not always. It is possible that a claim is too broad (e.g., because it relies on expansive functional language or claims a broad genus in a field where it is not reasonable to expect each of the species to be predictable variants) to demonstrate possession of the entire scope that is claimed.

[Guisslapp]

Just got out of a CLE on "divided infringement." It was a good reminder to draft method and system claims so that all the steps are performed by a single actor or that all the system components are under the control of a single entity. If it is necessary to recite steps performed by a second actor, make sure they are not positively recited but are expressed as conditions and try to avoid stating actions performed by the second actor in the present participle.

[mikedog]

Not always. It is possible that a claim is too broad (e.g., because it relies on expansive functional language or claims a broad genus in a field where it is not reasonable to expect each of the species to be predictable variants) to demonstrate possession of the entire scope that is claimed.

I had an application for a bioherbicide where this was an issue. However, most of my practice focuses on mechanical inventions.

[marketdawg]

One of you Dawgs check on the "You might beat my prices but you'll never beat my meat" trademark, copyright or whatever for my meat market please.:icon_wink:

[DogtorEvil]

One of you Dawgs check on the "You might beat my prices but you'll never beat my meat" trademark, copyright or whatever for my meat market please.:icon_wink:

One day, when I grow up, I won't snicker when I hear your ad.

[Houston Techsan]

I've only read a summary of the Ariad decision. Reading the entire opinion is on my to-do list.

With that disclaimer out of the way, I wouldn't think that a court would find the example claim to be entirely invalid for lacking written description unless the claim at issue was added during prosecution. If the claim was included in the original application, you might have enablement issues, but the claim would be self-supporting for written description purposes, correct?

The court in Ariad did give lip service to the old rule that the original claims were part of the disclosure but didn't emphasize this. I have often placed a chosen claim (without "claim language") in the summary. That can take care of any question of lack of enabling disclosure.

In my example of the "hydrogenation catalyst" the question should be "is the catalyst the point of novelty or patentability?" If not, the description should include language to so indicate and that any hydrogenation catalyst will do and give other examples. The specific example I cited was from a case filed on behalf of some foreign applicant and the foreign specification was used (probably a PCT) so there could be no amendment of the specification to broaden the disclosure. Your hands can be tied in these cases.

[Guisslapp]

Anyone read the new Bilski decision yet?

[mikedog]

Anyone read the new Bilski decision yet?

From the syllabus, it appears that we are back to pre-Bilski law.

[Guisslapp]

From the syllabus, it appears that we are back to pre-Bilski law.

The PTO has taken the position that they can reject process claims for (1) not being tied to a machine or transforming a substance OR (2) for embodying an abstract idea. I expect more Sec. 101 rejections because it is not enough to just meet the machine or transformation test.

[Houston Techsan]

Just saw a Fulbright Jaworski blurb on it. Will have to see the advance sheet.

[Guisslapp]

A case I am currently dealing with -

Application is filed for invention invented by A and B. Cannot get B to sign declaration, so file a Petition under 1.47 to accept application without B's signature. Petition is refused because USPTO attorney sucks (the Petition set forth all the statutory requirements and contained the necessary evidence, but this case has strange facts that this USPTO attorney probably has never seen before). While trying to address problems that USPTO attorney has with Petition, declaration signed by B comes in. We are not beyond 6 months from the Notice of Missing Parts. What do I do?