Patent terminology can be daunting at times, making it quite unapproachable for a novice inventor to understand what is really going on and what options are available in terms of filing a patent application. Take for example the various types of national patent applications that one can file. A national patent application means a U.S. application for patent that was either filed in the Patent Office under 35 U.S.C. 111 (i.e., directly with the USPTO as a domestic U.S. patent application), or which entered the national stage from an international patent application after compliance with 35 U.S.C. 371 (i.e., initially filed as an international application invoking the benefits of the Patent Cooperation Treaty).
CAFC Rules “Intervening Rights” May Be Based on Arguments Even Though Claims Unamended During Reexamination.
I like writing about esoteric patent law topics and the question of “intervening rights” in reexaminations/reissues is one of the more esoteric. See my 1998 JPTOS article entitledIntervening Rights: A Potential Hidden Trap for Reexamined Patent. The case of Marine Polymer Technologies, Inc. v. HemCon, Inc. is one of those rare instances in this esoteric area of patent law where the Federal Circuit announced a new “wrinkle” on when “intervening rights” apply in reexamination. Unfortunately, the rule announced by the majority in Marine Polymer Technologies (“intervening rights” apply to unamended claims based on statements made during reexamination) is squarely in conflict with the express language of 35 U.S.C. § 307(b), as Judge Lourie’s dissent vigorously (and more importantly, correctly) points out.
From the shameless commerce division, with at least a mild dose of self promotion, I am here to tell you about some of the intellectual property programs that the Practising Law Institute (PLI) has in store for the Winter 2011 season.
By now practically everyone probably knows that PLI is a sponsor, and that I teach the PLI Patent Bar Review Course, so I suppose you can take what I say with a grain of salt, but I am really looking forward to these PLI programs in particular. I will be signed up to attend via webcast the programs I cannot make live, and I will be in in Chicago, IL in March for the Patent Bar Review Course and in New York City for the 5th Annual Patent Law Institute from February 17-18, 2011. If your firm is a privileged member you can attend these and all other PLI programs for free, with the exception of the Patent Bar Review Course.
Yes, a message from the shameless commerce division no doubt, but there are a handful of excellent PLI patent related programs coming up in February and March that deserve a mention. After all, how often can one attend a program, get CLE credits and meet Federal Circuit Judge Pauline Newman? Not all that often to be sure, but Judge Newman will be attending and presenting at the Reexamination and Reissue program in New York City on February 11-12, 2010. If you cannot make it to New York for the live program the event will be broadcast live via webcast.
Reissue practice and reissue oaths are plagued by the tortured language of 35 U.S.C. § 251. Having suffered through 3 related reissues myself, I’ve often referred to this language in 35 U.S.C. § 251 as being something “other than English.” An expanded panel of the Patent Office Board of Appeals and Interferences (Board) in Ex parte Tanaka had to decide whether this byzantine language permitted reissue where only narrower claims were added as a “hedge” against invalidity of the original claims. Their answer was a unanimous and emphatic “NO,” an answer the Federal Circuit and its predecessor, the CCPA, had surprisingly dodged for over 45 years.