Under instigating circumstances that appear similar to Robert Kearns’ famous battle against the Big Three automakers over the windshield wiper yet having a decidedly different outcome, the inventor of a side view mirror emergency light recently battled Ford Motor Company before the Federal Circuit after Ford appealed the District Court’s verdict finding the patent valid and awarding the plaintiff nearly $56 million.[1] Read the remainder of this entry »
Patent Prosecution Archive
Patent Found Invalid for Anticipation in Light of Foreign Patent
By Robert H. Bejcek II | Filed in CAFC, Damages, International IP, IP Litigation, Patent, Patent Licensing, Patent Litigation, Patent Prosecution, Prosecution HistoryPatent Applicant Denied Administrative Due Process
By Robert H. Bejcek II | Filed in Board of Patent Appeals and Interferences (BPAI), CAFC, Obviousness, Patent, Patent Prosecution, Prosecution HistoryMany laws are designed with the concept for fairness in mind. After all, the court of equity was a predecessor to our current legal system. Patent law is no different. Before the Court of Appeals for the Federal Circuit, the case In re Stepan Company centered on this issue and a patentee’s right to administrative due process.[1]
The Stepan Company was the assignee of a U.S.patent[2] which taught “polyol-based resin blends and the methods of using them to create closed-cell polyurethane and polyisocyanurate-based foam.”[3] Essentially this patent was used to manufacture thermal insulation installed in the walls of buildings.[4] Concluding a reexamination proceeding, the patent examiner invalidated the patent’s claims as anticipated under §102(b) or obvious under §103(a).[5] On appeal, the Board of Patent Appeals and Inferences affirmed the invalidation. Read the remainder of this entry »
Historic Patent Reform Legislation Signed Into Law
By Robert H. Bejcek II | Filed in Patent, Patent Litigation, Patent ProsecutionAnyone who’s even remotely interested in patents, and even many who aren’t, have been watching this year as Congress has advanced patent reform legislation which would drastically change the United States patent law, aligning it more closely with foreign patenting offices. On September 8th, the Senate passed the Leahy-Smith America Invents Act by a margin of 89 to 9, and on September 16th President Obama signed the legislation into law. This new law will considerably alter patent prosecution and patent litigation. Some of the more important changes follow. Read the remainder of this entry »
Interference Proceeding Results in Invalidation of Issued Patent
By Robert H. Bejcek II | Filed in IP and Business, IP Litigation, Patent, Patent Litigation, Patent ProsecutionOccasionally during patent prosecution, another application or recently issued patent directed to identical subject matter prevents issuance of the new patent. When this occurs, priority between the two needs to be determined through an interference proceeding. In the nonprecidental case of Omura v. Shafer, an interference proceeding was declared between Shafer’s application, the Junior Party, and Omura’s patent, the Senior Party. The application and patent at issue involved “catadioptric projection objectives for imaging a pattern arranged in an object surface onto an image surface.” This technology generally refers to lenses in cameras or telescopes. After the interference was defined by the Board of Patent Appeals and Interferences (“Board”), Shafer moved for judgment against Omura asserting that certain claims in the patent lacked adequate written description. Additionally, this motion stated that if a lack of adequate written description were found, it would raise a threshold issue which would deprive Omura of standing in the interference.
In response, Read the remainder of this entry »
Advanced Patent Searching: Techniques, Efficiencies & Validity
By Dominic A. Frisina JD, MA | Filed in Patent, Patent Licensing, Patent Prosecution, Patentable Subject MatterFrisina, LLCin collaboration with the Akron-Summit County Public Library will provide a FREE Advanced Patent Search program on June 15, 2011 at 6:30 PM.
This program is designed to build on the already popular Akron Summit County Library Patent Search Class for innovators, entrepreneurs and businesses. Frisina will present:
- Advanced patent searching techniques
- Patentability searching
- Freedom to Operate and validity searching
- Practical techniques for an efficient search
- Using free patent databases
Location: Akron-Summit County Public Library, 60 S. High Street – Meeting Room 2
Register NOW Seating is limited: Call 330-643-9075 or email stdiv@akronlibrary.org.
Attorney Frisina has been involved in innovation for nearly 15 years combined as a scientist and attorney. Spanning several sectors of industry, his technical and legal expertise includes small molecule drug candidates, fine chemicals, biomaterials, polymers, robotics, semiconductors, and biotechnology. Particularly, he has worked as a chemist in the combinatorial drug discovery industry, where he developed and patented parallel batch reactor technology. During that time he also worked in combinatorial instrument research and related chemical applications. Mr. Frisina also has significant hands-on scientific experience with photovoltaic, fuel cell, and materials technologies, and has drafted and prosecuted patent cases in each of these areas, as well as numerous others.
Mr. Frisina is also deeply involved in helping clients to build brands through obtaining and enforcing domestic and foreign trademarks. This includes preparation and prosecution of trademark applications, as well as opposition proceedings, infringement matters, and licensing
The firm adds value for innovators through its IP Owl Blog which provides short articles streamlining information to help them better digest IP issues – from the simple naming of their business to deciphering complex portfolio management issues.
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Is Your Invention Obvious? The USPTO Probably Thinks So.
By Dominic A. Frisina JD, MA | Filed in KSR, Obviousness, Patent, Patent ProsecutionAs all patent holders are aware, inventions must be new, useful, and non-obvious in order to be patentable. But developments in US case law over the last several years, most notably the 2007 case of KSR Intl. v. Teleflex Inc., have made obviousness rejections much more difficult to overcome.[1] Particularly, in some cases it is now permissible to use the heretofore disallowed “obvious to try” argument to find an invention obvious. The United States Patent and Trademark Office (USPTO) now routinely rejects claims that would have been allowable pre-KSR, and arguably should be allowable even now in view of KSR. Furthermore, many issued patents may now be vulnerable to invalidation under the new standard for obviousness.
