Posts Tagged: "secret prior art"

The patent system will survive, but not thrive over the short term

Bruce Kisliuk: ”Those with more resources have some advantages in any litigation. That’s one reason a patent right is important, it can level that playing field a bit. Which is why I think the system will survive, maybe not thrive as some may wish but will survive, because you will still be able to protect. Technological progress marches forward and people aren’t going to sit and wait. So if you need patent protection you’re going to get what you can and you’re going to make sure you have a solid disclosure and work through the system as it stands when you’re working through it. To the extent you can try to put yourself in a position to be able to move left or right should the sea change. That’s the best, I think, anyone can do.”

The Myth of the 18-Month Delay in Publishing Patent Applications

Starting in November 2000, the USPTO started publishing patent applications 18 months after their earliest filing date. So the simple assumption is that you file a patent and 18 months later it get publicized, right? However, since the US has moved to a first-to-file System, the “earliest filing date” is really 18 months after the earliest priority date or an application can take advantage of the 12-month grace period could be published as early as 6 months after filing.

Exclusive Interview with Steve Kunin, Part 2

On May 6, 2013, I sat down with Steve Kunin and we discussed a wide range of patent issues. In Part 1 of the interview we discussed the new post grant procedures for challenging issued patents, and started discussing the estoppel provisions. In Part 2 we conclude our discussion of estoppel and move into discussing secret prior art, the Economic Espionage Act, the algorithm line of cases from the Federal Circuit and the erosion of patent rights that started with eBay v. MercExchange.

A Patent Conversation with Steve Kunin

Steve Kunin is the head of Oblon’s Post Grant Patent Proceedings practice group, and is also on the firm’s Management Committee. He is also a friend. For several years now I’ve been getting together with Steve for lunch periodically to talk about a variety of patent issues. On May 6, 2013, we sat down for a wide ranging discussion about patents, ranging from post grant proceedings to secret prior art to the Supreme Court and the Economic Espionage Act. Of course, we ended with several fun topics including discussion of the Washington Nationals and must-see Sci-Fi summer movies.

A Brave New Patent World – First to File Becomes Law

There are some exceptions whereby a person who files second can still prevail, but those exceptions are infinitesimally insignificant, and the law surrounding the parameters of the exceptions is non-existent and unfortunately rather ill defined by the USPTO at this point. It is also critical to understand that the new law contains traps and loopholes. For those who have not spent adequate time considering the many nuances of the law you will be surprised to learn what it really means. For example, did you know that long held and previously unpatentable trade secrets can now be patented? It seems unthinkable, but then again it is also unthinkable that the law will allow for the repatenting of inventions, but it does that as well.

CAFC Rules “Secret Prior Art” Requires Only Appreciation that Invention Made in Teva Pharmaceutical*

The doctrines of “secret prior art” and “inherency” both merged in the case Teva Pharmaceutical Industries Ltd. v. AstraZeneca Pharmaceuticals LP to surprise, and unpleasantly upend the patentee. Judge Linn’s opinion ruled that “[a]n inventor need not understand precisely why his invention works in order to achieve an actual reduction to practice.” Relying upon the collective holdings in Dow Chemical, Mycogen Plant Science, and Invitrogen, the Federal Circuit panel then concluded that “it is apparent that the district court correctly entered summary judgment” of invalidity of the asserted claims in the ‘502 patent under 35 § 102(g)(2).