International Patent Matters from a Canadian Patent Lawyer’s Perspective

US Law Reform: Prefiling Protection for Inventors under revised S515

 US Law Reform: Prefiling Protection for Inventors under revised S515
 
The Canadapatentblog postings of November 16, 2009 and January 31, 2010 addressed the scope of the draft novelty requirements under US Senate bill S515 as originally approved by the US Senate Judiciary Committee in April, 2009.  A proposed revision of that text has now been published by the Senate and is reproduced in the Patently’O blog posting of March 9, 2010 available here:
 
http://www.patentlyo.com/patent/2010/03/patent-reform-act-of-2010-proposed-first-to-file-statute.html#comments
 
The language used in this revision expresses much more clearly the apparent intent of the legislators.  The extensive Patently’O blog  commentaries on this revised text finally show that interested members of the patent profession are beginning to attempt to address the real meaning of these provisions.  These commentaries are all well worth reading.
 
In the Canadapatentblog posting of January 31, 2010, the key recommendation was that, under the new scheme being proposed, persons intending to obtain patent protection in the United States should: “file early and file often”.  Some of the key points to consider are as follows:
 
- initial priority patent filings including US Provisional applications should be as complete as possible in order to meet 35 USC 112 requirements
 
- foreign priority filings will enjoy the benefits of the US grace period provisions equally with the filing of a US Provisional application
 
- every patent filer should take advantage of the right to make additional filings during the priority year and consolidate the disclosures of all such filings into the final, non-provisional, patent application that may then be used around the world
 
- the proposed new US patent law includes a Canadian style self-originating grace period which applies to self-originating disclosures, i.e. disclosures originating from the inventor associated with the filing
 
- the proposed new US patent law includes an additional feature present in the following sections:
 
35 USC 102 (b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if— …….
(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor…….
 
(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if— ………
(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; ………
 Read the rest of this entry »

Posted in Patents, Canadian Law, US Law, Articles, For Inventors, For Attorneys March 17th, 2010 by David J. French | No comments

First-To-File vs First-To-Invent: Why is there a Dispute?

Patent law reform legislation, for the third time, is presently pending before the US Congress. During 2009 the debate over Health Care has moved this subject to the back burner. But in the last days of 2009, initiatives are now being taken by proponents to save the old first-to-invent patentability system rather than switch to a first-to-file concept as adopted elsewhere in the world.

Defenders of the existing first-to-invent system argue that it spares inventors the burden of rushing to the patent office to make a record of their inventions. If you are the first inventor under the existing US system, then you’re entitled to delay for up to one year from the date of your conception of your invention with complete security. You may do so only so long as you are working on reducing your invention to practice, by either building an apparatus that incorporates the invention or by filing a patent application. But if an inventor is diligent in this respect, there is no rush to the patent office.

The patent law blog Patently’O run by Prof. Dennis Crouch addressed this issue once again on December 10, 2009:

http://www.patentlyo.com/patent/2009/12/the-matrix-for-first-inventor-to-file-an-experimental-investigation-into-proposed-changes-in-us-patent-law.html

This posting makes reference to a paper of December 4th by Brad Pedersen and Justin Woo of Patterson, Thuente, Skaar & Christensen, P.A. in Minneapolis entitled “The ‘Matrix’ for First-Inventor-To-File: An Experimental Investigation into Proposed Changes in U.S. Patent Law”:

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1518660

Amongst numerous comments made on the Patently’O blog in response to this posting, a strong defense of the existing first-to-invent system was put forward by Ron Katznelson, whose views are representative of many of the 160,000 small business and startup companies represented by the The Small Business Coalition. These comments were based on the practical experience of small businesses and startups who count on patent rights to get themselves under way but cannot afford to comply with the early filing requirement of a first-to-file system.

Here are Ron’s comments on this issue:

“Consider an actual profile of a five-year R&D and invention effort of the Mova® system developed by my friend Steve Perlman. It is described in Steve’s Columbia University presentation available at http://j.mp/Mova-development. Slide 35 shows that no less than fifty important inventive ideas had been conceived, evaluated and tested over periods spanning months or years in the course of this system’s development (labeled by “invention” squares).

The majority of these inventions proved to be useless. During that time, only about six patent applications had been filed (labeled by “path to success” arrows). In most cases, there was no way of filing prompt and enabling applications. As Steve explains in his presentation, the prospects of such a development effort under FTF would have been dire. Because the cost, effort and time lost to have acted on every one of these inventions would have been prohibitive, this R&D team would have had to frequently face a painful dilemma as to which of these inventions should be written up and filed in a patent application.

Unfortunately, many such premature guesses would have proved wrong, so, under FTF, costly applications would be filed for some useless inventions and patent protection would be lost for other valuable inventions. Investors will not assume such risks, which is why such inventions seldom occur under FTF scenarios.”

Posted by: Ron Katznelson President of Bi-Level Technologies, Encinitas, California, Dec 16, 2009 at 08:25 AM as a comment to the Patently’O Blog of December 10, 2009.
In commenting on the Pattersen and Woo paper (above) Prof Dennis Crouch had observed in his Patently’O Blog of December 10, 2009:
“The Patent Reform Act of 2009 would replace the current “first-to-invent” (FTI) system with a new “first-inventor-to-file” (FITF) system. While touted as a way to harmonize the US system with “first-to-file” (FTF) systems used in other countries, an experimental investigation of a matrix of two hundred typical fact patterns for two competing inventors was analyzed under all three systems (FTI, FITF and FTF) to test this assumption. Based on the matrix analysis, it appears that if FITF is adopted there likely will be changes in applicant behavior and significant extra costs for at least several years as a result of the transition to a new system; and, it is unclear whether FITF really gets the US any closer to patent harmonization.”

Fair enough comment. But where is all this anxiety regarding a switch to a first-inventor-to-file system coming from? If you review the comments of Ron Katznelson above and the recent submissions of The Small Business Coalition on Patent Legislation in a letter sent to the U.S. SBA ( http://bit.ly/SB-Coalition-Letter-to-SBA ) , the great concern appears to be the consequences of pressuring small businesses in America, and particularly new business startups, to prepare and file patent applications more frequently and at a premature stage, before their inventions are fully developed and understood.
First some clarifying observations.

Compare “first-to-file” and “first-inventor-to-file” Read the rest of this entry »

Posted in Patents, US Law, Articles, For Inventors, For Attorneys January 31st, 2010 by David J. French | No comments

Swearing Back under a revised US patent law: 37 CFR 1.131 equivalent in S515

Dennis Crouch, as part of his Patently O blog is circulating a survey that addresses the first-to-invent/first-to-file patentability requirements. He is doing so in conjunction with a larger survey addressing the extent to which applicants are able to swear-back of prior disclosures published in the one-year grace period before their US filing date. According to the US code of federal regulations applicable to patents, 37 CFR 1.131 provides as follows:

37 CFR 1.131 Affidavit or declaration of prior invention.

(a) When any claim of an application …is rejected, the inventor of the subject matter of the rejected claim…….may submit an appropriate oath or declaration to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based……

A cited reference means a publication or a pending application filed by another party located by the examiner which does not claim the same invention but which nevertheless either discloses the same invention or renders the applicant’s invention obvious. Swearing-back of such a reference does not close the book on whether a valid patent will be granted. The other party may be the true first inventor and the cited reference may be associated with a public use that could eventually defeat the applicant’s eventual patent. But by forcing an applicant to make a 37 CFR 1.131 declaration, the patent office has at least applied the first-to-invent concept to the extent that the patent that will be granted is not clearly invalid: If you can’t swear back of a reference then you are not the first inventor!

Dennis Crouch has been gathering evidence on the extent to which reliance has been placed by applicants before the US patent office on this procedure. This goes to the heart of the issue as to whether a switch to the first-to-invent system would be appropriate for a revised United States patent law.

Meanwhile, bills are progressing through both the US House of Representatives and the Senate to revise the US patent law in certain fundamental respects. One of the proposed revisions will be to adopt a first-to-file system, more correctly described by its proponents as a first-inventor-to-file system. Not appreciated by virtually all of the commentators is that these two bills pending before Congress contain a remarkable provision for which there is no precedent anywhere in the world. Using Senate bill S515 as a reference, this bill includes a kind of echo of the existing 37 CFR 1.131 procedure. This legislation would amend Section 102 of the US patent law to explicitly provide as follows:

“102(b)

(b) Exceptions.–
(1) Prior inventor disclosure exception.–Subject matter that would otherwise qualify as prior art based upon a disclosure under subparagraph (B) of subsection (a)(1) shall not be prior art to a claimed invention under that subparagraph if the subject matter had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or others who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor.” Read the rest of this entry »

Posted in Patents, US Law, Articles, For Attorneys November 16th, 2009 by David J. French | No comments

The Crisis in the American Patent System

                                    The Crisis in the American Patent System
   

                                                                      Part I
 

This first section is part of a multi-part paper addressing the challenges presented by the American patent system.  The first part is historical.  The second part, to follow, addresses proposals pending before Congress in 2009 to improve the operation of the American patent law in the 21st century. A further part will provide a comparative analysis of the experience of Europe and Canada with the principles of “absolute novelty”, more precisely “absolute world novelty”, adopted in those jurisdictions in 1978 and 1989 respectively.
 

                                                The Patent Crisis of the 1830s1
 

            In the 1830s, the United States was undergoing a patent crisis.  It is not the same patent crisis that it faces today, but something can be learned from what occurred in those most interesting years.
 

The Patent Act of 1790
 

            On April 10, 1790, President Washington signed the first patent statute into law.  The first patent statute did not create a Patent Office. It directed applicants to file a petition for a patent with the Secretary of State. Then the Secretary of State, the Secretary of War, and the Attorney General were to determine if they, or any two of them, thought “the invention or discovery sufficiently useful and important” to merit a patent.         
 

            The first officers given this duty were Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and Attorney General Edmund Randolph. They called themselves collectively the “Commissioners for the Promotion of Useful Arts,” or the “Board of Arts,” although others called them the Patent Commission or Patent Board.
 

            The Patent Act of 1790 did not satisfy applicants, and it did not satisfy those who were appointed to administer it. Applicants did not like the strictness with which the Patent Board determined who should and who should not receive patents. There was no appeal from the discretion of the Patent Board. The members of the Patent Board had high positions in the Government and did not have sufficient time to spare to run the patent system.  Thomas Jefferson wrote a letter years later in 1813, stating that the investigations of patent applications had required more time than the members of the Patent Board could spare from their higher duties and that the applications had required a great deal of time to understand and treat with justice.
 

            In a 1792 letter to Dr. Hugh Williamson, the chairman of a congressional committee to revise the patent law, Jefferson wrote that it distressed him to render crude and uninformed opinions on valuable and important rights without being able to devote the full attention that the petitions deserved. He drafted a bill to reform the patent law on December 1, 1791, and discussed it with Dr. Williamson.  Mr. Jefferson’s bill would have eliminated all examination and made the Secretary of State the registrar of patents, with determinations of patent validity to be made by the courts.
 

           While Mr. Jefferson’s bill as written was not introduced into Congress, some of its provisions were incorporated into a bill that was passed as the Act of February 21, 1793. It is likely that the primary reason for the Act of 1793 was not the dissatisfaction of inventors but was the inability of the Patent Board to administer the Act of 1790 while carrying out their other duties. Read the rest of this entry »

Posted in Patents, US Law, Articles, For Inventors, For Attorneys September 11th, 2009 by David J. French | No comments

The Torture of Explaining to Clients - KSR

Every attorney practicing patent law has experienced the difficulty of explaining to clients the principles of patent law. This exercise is particularly challenging when the client, subjectively, has made a substantial advance which the attorney feels is not likely to support the grant of a patent.

Typically, when interviewed, the inventor will describe a number of significant features respecting his/her invention which he/she has developed and believes to be novel. Since these features apparently have not been incorporated into a marketable cartridge made by others, the inventor has the impression that a patent should be obtainable on such a device. As all attorneys know, unfortunately, that is not the full story. Even if the inventor has subjectively made an invention, it is necessary to explain to the inventor the distinctions of patent law and the reasons why a patent may not necessarily be granted. What follows is yet another attempt to present this explanation. Read the rest of this entry »

Posted in Uncategorized, Patents, Patent Prosecution, US Law, Articles, For Inventors, For Attorneys January 17th, 2008 by admin | No comments

Priority Right When Abandoning And Refiling Applications

“We frequently simply re-file US provisional applications to start new one year periods where clients are not ready to proceed.”

The above quotation is from a US attorney handling a PCT filing on behalf of a US resident inventor. This response was given when, as representative of the beneficial Canadian owner, I inquired about abandoning the US provisional application prior to the filing of a further application in order to restart the priority date. Unfortunately, the abandonment of a US provisional application, while automatic at the end of 12 months from the original filing date, cannot be arranged on short notice prior to that deadline.

The regulatory entitlement to voluntarily abandon the US provisional application is not entirely clear:

USPTO MPEP 201.04(b) Provisional Application
http://www.uspto.gov/web/offices/pac/mpep/documents/0200_201_04_b.htm#sect201.04b

The US patent office takes the position that a voluntary abandonment is not effective until it is entered by the office. They recommend that applicants allow a delay of three months for this to occur.

In these circumstances, what problems can arise by “ simply re-filing US provisional applications to start new one year periods where clients are not ready to proceed”?

Article 4C(4) of the Paris Convention provides that:

“ A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union. shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.”

Paris Convention Article 4 Priority right
http://www.uspto.gov/web/offices/pac/mpep/documents/appxp_4.htm#parart4

Countries are not obliged to adopt all of the limitations in this paragraph but most probably do. Canada certainly does. The right to restart a priority date is limited in the Canadian Patent Act by the following:

28.4 (5) A previously regularly filed application mentioned in section 28.1 or 28.2 (i.e. the right to claim a priority date for each respective claim) or subsection 78.3(1) or (2) shall, for the purposes of that section or subsection, be considered never to have been filed if

(a) it was filed more than twelve months before the filing date of

(i) the pending application, in the case of section 28.1

(ii) the co-pending application, in the case of section 28.2,

(iii) the later application, in the case of subsection 78.3(1), or

(iv) the earlier application, in the case of subsection 78.3(2);

(b) before the filing date referred to in paragraph (a), another application

(i) is filed by the person who filed the previously regularly filed application or by the agent, legal representative or predecessor in title of that person,

(ii) is filed in or for the country where the previously regularly filed application was filed, and

(iii) discloses the subject-matter defined by the claim in the application mentioned in paragraph (a); and

(c) on the filing date of the other application mentioned in paragraph (b) or, if there is more than one such application, on the earliest of their filing dates, the previously regularly filed application

(i) has been withdrawn, abandoned or refused without having been opened to public inspection and without leaving any rights outstanding, and

(ii) has not served as a basis for a request for priority in any country, including Canada.


Canadian Patent Act http://laws.justice.gc.ca/en/showdoc/cs/P-4/bo-ga:s_27//en#anchorbo-ga:s_27

The above provisions are extremely difficult to read. But they make it clear that the replacing application intended to start a new priority date must not overlap with the earlier filing. The earlier filing must have been abandoned at the time that the new priority filing is made. 

Obviously, this language is an attempt to comply with article 4C(4) of the Paris Convention. In all likelihood the national patent laws of many members of the Paris Convention include similar provisions.

The conclusion is that the procedure of: ” simply re-filing a US provisional application to start a new one year period where clients are not ready to proceed” will not necessarily generate a genuine new priority date for use in making filings out of the United States if the second filing overlaps in any way with the first filing. Attorneys beware!

David J French

Ottawa, Canada

Posted in Uncategorized, Patents, Canadian Law, US Law, For Attorneys January 8th, 2008 by admin | 1 comment

KSR versus Teleflex - US Supreme Court decision April 30, 2007

The US Supreme Court has now issued its long-awaited decision in KSR International versus Teleflex Inc. And the earth is still shaking.

The Court rejected the “rigid approach” of the US Court of Appeals for the Federal Circuit (page 11). The CAFC had been applying a test for obviousness requiring that prior art, in order to defeat a patent application for lack of invention, must contain a “teaching, suggestion, or motivation” (TSM test) that would point to the invention. The TSM test was, in essence, a test for the presence of obviousness. Patents are not supposed to be granted for obvious inventions.

The US Supreme Court reiterated its previous observation that: “(a) patent for a combination which only unites old elements with no change in their respective functions… obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men”. And the Court presently stated: “the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”

These observations are in keeping with the “Golden Rule” of patent law that a patent should not withdraw from the public anything that was previously available to the public. Things that were “available to the public” include not only everything previously disclosed, but obvious variants on everything previously disclosed.

The CAFC, wrestling with the disputes arising between patent applicants and patent examiners over when an application should be rejected on grounds of obviousness, had previously objected that examiners cannot merely declare an invention to be obvious as a conclusory statement. The CFAC had stated: “There must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”. The US Supreme Court in the present decision has now emphasized that an examiner need not seek-out precise teachings in the prior art in order to make an obviousness rejection. Instead, an examiner, or court, can take into account the inferences and creative steps that a person of ordinary skill in the art would employ.(page 14)

The US Supreme Court offered as part of a better analysis the observation that: “…any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” (Page 16)

In considering the hypothetical standard of a “person of ordinary skill in the art”, the court observed that such a person: “is also a person of ordinary creativity, not an automaton.”

The consequence of this decision is that there will be many more rejections of patent applications before the US Patent Office. And additionally, there could be a considerable number of patents already issued that will be declared invalid. The US Supreme Court has opened the floodgates to permit large number of patent rejections and declarations of patent invalidity.

The statement that the hypothetical ordinary person used to test the concept of “obviousness” may be taken to be “a person of ordinary creativity” will render the obviousness test much more subjective. The policy of the CAFC to introduce more certainty into this delicate central issue of patent law has been set aside in favor of reducing the extent to which patent protection may be granted.

This is definitely an anti-patent initiative by the US Supreme Court which may eventually be echoed by courts around the world. It may take time for this new attitude towards patents to have its full effect, but henceforth, certainly in the United States, numerous patents will have to be enforced under dark clouds of uncertainty. This may lead to many cases being settled on terms more favorable to competitors, accused of being infringers. Perhaps this is what the Supreme Court of the United States intended.

Posted in Uncategorized, Patents, Patent Prosecution, US Law April 30th, 2007 by David J. French | No comments

Liebel-Flarsheim v. Medrad (Fed. Cir. 2007). Patently-O Commentaries

 

Dennis Crouch’s blog posting of March 22, 2007 entitled: “The New Law of Enablement” provides a commentary on the US Court of Appeals for the Federal Circuit case of Liebel-Flarsheim v. Medrad (Fed. Cir. 2007). This posting has inspired an exceptionally long thread of commentary, giving rise to this commentary as a consequence.
Essentially, the CFCA ruled on a claim to a mechanical drive for a hypodermic needle injector for use with a disposable syringe. The patent included a description which addressed inclusion (only) of a pressure jacket to protect the disposable syringe from bursting under pressure. The CFCA ruled that such claims were invalid when the patent owner attempted to apply the claims against a competitor manufacturing a needle injector without a pressure jacket.
The patent specification indicated in the background discussion that existing disposable syringes required a pressure jacket because syringes that are able to withstand high pressures are “expensive and therefore impractical where the syringes are to be disposable.” The CFCA observed that this taught away from the use of the new style mechanical drive needle injector for use with a disposable syringe in the absence of a pressure jacket.
The competitor developed a mechanical drive hypodermic needle injector system for use with a disposable syringe that did not require a pressure jacket. Essentially, the competitor invented a disposable syringe that was strong enough. The competitor defended itself against the relevant claims on the basis that the patentee had failed to provide an enabling disclosure that would describe how its hypodermic needle injector could be made to work with a disposable syringe in the absence of a pressure jacket.

Even the patentee’s inventors admitted that they were stymied by the challenge of producing a pressure-jacketless system that would work with existing disposable syringes. The competitor succeeded where the patentees inventors said they were not able to provide a solution.
When the application was originally filed, the claims to the mechanical drive included the limitation that the needle injector was claimed in association with a pressure jacket for containing disposable syringes. That limitation was removed during the prosecution of a subsequent Continuation application after the patentees learned of the activities of the competitor in building a system that lacked a pressure jacket.
The CFCA adopted the principle that a patentee’s specification: “must enable one of ordinary skill in the art to practice the full scope of the claimed invention.” (emphasis in original).

Because in the present case the asserted claims read-on and included an injector system with and without a pressure jacket, this was held to be the full scope of the claimed invention. The claims were, on this basis, held invalid. The claims read-on the competitor’s system because the claims were silent about the presence of a pressure jacket.
The principle of this ruling is hotly contested by many of the commentators to the above blog. Some felt that it was unjust for a patentee to be the denied the benefit of claim coverage where the competitor was using all of the features of claims that could not be invalidated on the basis of the prior art. Others felt that the claims should be held invalid where the patentee had failed to provide an enabling disclosure for the full scope of patent claim coverage that the patentee was asserting.
This debate is reminiscent of the often-raise defense in Canadian patent proceedings, that the patentee has: “claimed more than he has invented”. I’’ve always been puzzled at this allegation. If a patent claim fairly describes a characteristic of the preferred embodiment using language which prevents the claim from describing anything in the prior art, then such a claim would seem to be valid. The statement that such a claim covers more than was invented is really a statement that the claim should have included further limitations. But if the claim can stand-up to novelty and obviousness tests, why can’’t such a claim be held valid?
I have always thought that it was permissible to claim a sub-component of an apparatus, focusing the claim on the aspect of an apparatus that is novel and inventive. For example: “a vehicle having a windscreen and a wiper for removing water from the windscreen wherein ……(describing the wiper) “ . If the inventor has described a highway motor vehicle as his preferred embodiment, would it be outside the scope of such a claim to cover such a wiper when carried by a boat, or an aircraft? Would it matter if the disclosure acknowledged that the rubber used in the wiper as described in the preferred embodiment would be susceptible of deterioration in the presence of saltwater, but the claim is silent as to the type of rubber to be used in the wiper?

Could a competitor then adopt the wiper for use with a boat in a saltwater environment by substituting a different rubber not ever mentioned in the original patent disclosure? Would it matter if the different rubber qualifies as a new invention?
Another analogy might be the case where the wiper inventor observed in his patent disclosure that his wiper may be susceptible to lift-off in the presence of high-speed winds. Then a competitor invents a deflector vane which remedies this defect. However, the competitor uses exactly the wiper as conceived and claimed by the patentee.
In either of such cases, could it be said that the patentee had “claimed more than he had invented”; or, as the CFCA had phrased it, failed to: “enable one of ordinary skill in the art to practice the full scope of the claimed invention”?
The key question is whether the “invention” is delimited by the claim or the “invention” is no broader than the inventor’s understanding at the time that the patent description is filed. Reference may also be made to the Canadian Patent Act section 32 which addresses the patenting of improvement inventions.
The exceptional number of commentaries forming the thread for the above blog posting shows the great disparity of opinion arising around this question. There are really two issues at stake. The first is what the law requires, and the second is what good sense would suggest to be appropriate.

 

Posted in Patents, Patent Prosecution, Canadian Law, US Law, For Attorneys March 25th, 2007 by David J. French | 2 comments

Consequences of eBay v. MercExchange

Ever since the US Supreme Court decision in the eBay case the patent community has speculated as to the extent that trial judges would commence to exercise their discretion to deny injunctions to plaintiffs who succeed in proving patent infringement.  A recent decision in the US Federal District Court for the Eastern District of Texas may represent one direction for the future. Read the rest of this entry »

Posted in Patents, US Law, Patent Litigation, Articles August 3rd, 2006 by David J. French | No comments

Biovail Corporation vs Anchen Pharmaceutical Inc.

Summary infringement decision, United States Federal District Court for the Central District of California, August 1, 2006

The following is a summary of an interesting decision in the pharmaceutical-generic universe, according to a Biovail Corporation news release of August 2nd, 2006.

The basic patent on the essential drug, bupropion, represented by “Wellbutrin” (Biovail trademark) expired some considerable time ago. It was originally patented by Burroughs-Wellcome (later Glaxo-Wellcome,) in 1974. A competing drug, used to control tobacco craving, is “Zyban”. Biovail Corporation of Mississauga, Ontario, is particularly active in developing and patenting pre-existing drug formulations in new drug delivery formats.

The Biovail patent as reported in the Biovail news bulletin of August 2, 2006 concerns an extended release version of the antidepressant drug “bupropion”, sold by Biovail as “Wellbutrin XL”. Wellbutrin XL has supported the granting of a fresh US patent to Biovail. This additional patent is not directed to the original drug, but to a new composition in tablet form which controls the release of the drug into the bloodstream of a user. The granting of fresh patents for improved drug delivery is not uncommon in the drug industry. In this case, the granting of the further improvement patent for “Wellbutrin XL” may have been particularly justifiable because bupropion in concentrated dosage showed a tendency to invoke seizures. Read the rest of this entry »

Posted in Patents, US Law, Patent Litigation, For Attorneys August 2nd, 2006 by David J. French | No comments

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