was Senior In-House Patent Counsel for Huawei Canada and has worked with a number of law firms and corporations, including BlackBerry Ltd. in Canada. His practice focuses upon patent preparation and prosecution. The views expressed are his own.
Photo credit: Thanks to Rod MacIvor
On April 22, 2021, the United States Supreme Court issued a decision in Carr v. Saul, which dealt with a constitutional Appointments Clause challenge to Administrative Law Judges (ALJs) under the Social Security Administration (SSA). In particular, the issue in Carr was whether claimants for disability benefits had forfeited their Appointments Clause challenges by failing to raise those constitutional challenges before the agency. The Supreme Court has now ruled that the claimants’ challenges were not forfeited. The decision favoring the claimants was unanimous, although the Court was not quite unanimous on the legal bases for the ruling. The question to be addressed in this essay is what effect, if any, Carr has on practice before the United States Patent and Trademark Office (USPTO); and in particular, whether constitutional challenges must be raised before the agency lest those challenges be forfeited.
“Teaching away” is a concept important to obviousness analysis under U.S. patent law. “Teaching away” basically bears upon the issue of motivation to combine elements in a manner set out by a patent claim, and such motivation is relevant to obviousness analysis but not to anticipation analysis: would one skilled in the art have had reason (or motivation) to put the known elements in the arrangement that the inventor has claimed? In a sense, “teaching away” is an anti-motivation, as it weighs against such an arrangement…. The question I propose to address is: Does the jurisprudence concerning “teaching away”—particularly the jurisprudence pertaining to whether a reference does or does not “teach away”—make any sense? And if not, what ought to replace it?
The time is upon us when young patent professionals, many of them fresh out of law school (or out of engineering school) begin their professional lives as patent prosecutors. These new members to our profession quite naturally look to senior patent professionals for practical guidance. The guidance often is in the form of adages that form the Conventional Wisdom of patent prosecution. Much of this Conventional Wisdom, as it turns out, is often not very practical and some of it is not all that wise. In most cases, the Conventional Wisdom is not exactly wrong; it’s just that there may be other ways of doing things that may be more practical or effective for a particular practitioner. I’m going to talk about some pieces of Conventional Wisdom that I received that turned out to be, well, not-all-that-helpful advice. I will share what advice I would offer in its place.
Two matters currently pending before the United States Patent and Trademark Office illustrate the consequences of focusing upon details of a claim rather than upon the claimed subject matter as a whole. Looked at superficially, the decisions may be consistent with the law and supported by substantial evidence; but are they, really?