navigating the patent maze

CREATE - the Cooperative Research and Technology Enhancement Act - was a bill in Congress that would amend the patent law on the non-obviousness requirement to create a safe harbor for inventions resulting from collaborations or research team efforts where team members are in different institutions.

The bill was passed by both the Senate and the House of Representatives, but must be cross-approved before being sent to the President for signing into law. Now that the Congress has adjourned for the political season, the bill will languish and is unlikely to get passed by this Congress.

The CREATE Act is a response to a Federal Circuit decision (Oddzon Products v Just Toys) in which the Court held that sharing of confidential information could be a reason to find an invention obvious when the inventors weren’t under an obligation to assign their rights to the same entity. Even Congress recognized the unfairness of this situation and its possible chilling of collaborative work.

For detailed information on this important bill, go to the horse’s mouth and read the Congressional Report on CREATE.

A hefty tome on claim construction, written by Harold Wegner, has recently been released on-line. The paper, “Claim Construction: Toward a Simplified and Predictable Body of Patent Law“, was prepared for a Foley & Lardner Intellectual Property Roundtable in Detroit, September 14, 2004. This paper is not light reading. I only wish that claim construction was simple and predictable. Lately, it has become very confusing and convuluted, as Hal Wegner explains. Moreover, it appears as if there is a different standard for biotechnolgoy inventions, especially those involving nucleotide and amino acid sequences.

Stay tuned as the Federal Circuit continues to confuse us all.

I have been asked many times to give an opinion about a patent and sometimes asked if a particular use is infringing on a patent. Mostly there seems to be confusion or misunderstanding about what is an “opinion” and the necessity or not for an opinion. In U.S. patent law practice, an “opinion” is either a “non-infringement opinion” (you are not infringing the patent in question) or an “invalidity opinion” (the patent in question is invalid because of prior art) and serves a singular purpose: to protect the client against charges of willful infringement. A finding of willful infringement can inure triple damages and attorney fees for the infringer.

A variety of reasons (e.g., cost - opinions can cost tens of thousands of dollars) may encourage or discourage a client from wanting an opinion. But what are the ramifications of a decision to forego an opinion or to claim that the opinion is privileged and not disclose it? Could this infer that the client knows it is infringing?

In one of the most important Federal Circuit patent cases this year, Knorr-Bremse Systeme Fuer Nutzfahrzeuge GMBH v. Dana Corporation, et al., the Court emphatically said, “no adverse inference that an opinion of counsel was or would have been unfavorable flows from an alleged infringer’s failure to obtain or produce an exculpatory opinion of counsel.”

Under U.S. patent law,

a person shall be entitled to a patent unless–
the invention was … described in a printed publication in this or a foreign country….

While we all recognize that a printed publication includes journal articles, books, etc., and that speaking at a conference is not a printed publication, what about a poster that is presented at a conference?
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A claim preamble is the introduction to the claim. It can be identified as the part of the claim occurring before the word “comprising”, “consisting of”, “consisting essentially of”, “having”, or other such words.

For example, ithe preamble in the following claim (from U.S. Patent No: 5,612,179) is in italics:

A method for detection of at least one coding region allele of a multi-allelic genetic locus comprising:
(a) amplifying genomic DNA with a primer pair that spans a non-coding region sequence, said primer pair defining a DNA sequence which is in genetic linkage with said genetic locus and contains a sufficient number of non-coding region sequence nucleotides to produce an amplified DNA sequence characteristic of said allele; and
(b) analyzing the amplified DNA sequence to detect the allele.

What is its significance?
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I find that many people are surprised to find out the meaning of the indefinite article “a” or “an”. When used in a patent claim after the term “comprising”, it means “one or more” and not just “one”. The article “a” is interpreted to mean “one” only in rare circumstances when it is very clear that the patentee means only one.

For example, if a claim recites: “A vector comprising a gene of interest….” then the vector may contain one or more genes of interest.

How many times have I reminded the scientists to keep proper notebooks, including witness signatures? Mostly I was ignored. Now along comes a case in the United States District Court in California that shows again the importance of good notebook habits. This time the notebooks were needed to evidence inventorship of an unnamed inventor on a patent. Evidence of inventorship needs to corroborated, and generally a putative inventor’s notebooks are insufficient corrobaration of testimony, at least where the notebooks are not witnessed.

Huang v California Institue of Technology, C.D. Cal., No. 03-1140 MRP, 17.02.04
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