Comments for Patently-O https://patentlyo.com America's leading patent law blog Wed, 15 Aug 2018 15:00:42 +0000 hourly 1 https://wordpress.org/?v=4.9.8 Comment on Rejoining Written Description and Enablement in Amgen v. Sanofi by MaxDrei https://patentlyo.com/patent/2018/08/rejoining-description-enablement.html#comment-412787 Wed, 15 Aug 2018 15:00:42 +0000 https://patentlyo.com/?p=24091#comment-412787 I remember when the AIA going through Congress and the headless chickens were running amok, fretting that inventors would have to file on mere speculation or else see another get in first, at the PTO. I counselled that filing prematurely was the worst thing to do. Your application would be published at 18 months but you would end up with nothing.

The “plausible” standard seems to me to be working well. Those with a specification that makes their claimed subject matter “plausible” (with in vitro comparative data, for example) do alright. Those with no such data in their application as filed routinely come to grief.

The skill of the drafter (inventor, and inventor’s employer) is to draft a finely graduated set of claims (anon’s Ladder of Abstraction, if you will) that will deliver maximum enforceable scope from a small set of experimental data. But here again, the “plausibility” standard is useful for settling what scope is allowable.

I don’t understand how “plausible” is not in line with TRIPS. Again, see Kramer in this thread.

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Comment on Rejoining Written Description and Enablement in Amgen v. Sanofi by Confused https://patentlyo.com/patent/2018/08/rejoining-description-enablement.html#comment-412785 Wed, 15 Aug 2018 14:40:59 +0000 https://patentlyo.com/?p=24091#comment-412785 The question at the heart of all of this is whether it is (or should be) a function of the patent system to provide a reward for “educated” (or, as the case may be, “lucky”) guesses made by patent applicants.

To be frank, I do not have a strong opinion either way on this issue. That is, I can see circumstances in which court rulings one way or the other might be genuinely “harsh” on either a patentee or a putative infringer. However, in general, I would be in favour of upholding validity in the case of an “educated” guess.

Nevertheless, if legislators want to prohibit the granting of patents based upon such guesses, then my view is that it would be necessary to amend both national and international laws to achieve this objective. This is because, as things currently stand, there is nothing in TRIPS that permits Member States to apply a higher “disclosure” bar than that set out in Article 29.1.

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Comment on Rejoining Written Description and Enablement in Amgen v. Sanofi by Night Writer https://patentlyo.com/patent/2018/08/rejoining-description-enablement.html#comment-412784 Wed, 15 Aug 2018 14:37:44 +0000 https://patentlyo.com/?p=24091#comment-412784 anon, the 5 minute analysis is clearly that (3) hangs off of (2). The reason it would take a couple of hours is that examples of usage would have to found to make arguments to explain the use of the commas.

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Comment on Rejoining Written Description and Enablement in Amgen v. Sanofi by Night Writer https://patentlyo.com/patent/2018/08/rejoining-description-enablement.html#comment-412783 Wed, 15 Aug 2018 14:35:21 +0000 https://patentlyo.com/?p=24091#comment-412783 Plus you never explained the “, and” and your arguments seem to hinge on saying that the comma before “in such” indicates that all of (3) modifies the head noun. Not a convincing argument.

As I said it would take time to analyze this sentence. The reason is that it has so many problems.

But frankly the most convincing evidence that (3) hangs off (2) and not the “written description” is that (3) is a restatement of (2).

Not sure why you think you have won. You have not responded to my posts and the analysis you have provided is deeply flawed.

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Comment on Rejoining Written Description and Enablement in Amgen v. Sanofi by Night Writer https://patentlyo.com/patent/2018/08/rejoining-description-enablement.html#comment-412782 Wed, 15 Aug 2018 14:32:06 +0000 https://patentlyo.com/?p=24091#comment-412782 anon, you have no idea what you are talking about in terms of grammar.

Anyone would tell you to do a proper analysis of this sentence one would need to look at other example uses to try and make an argument for how that “,in such …” should be interpreted and for how the “, and of” should be interpreted.

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Comment on Rejoining Written Description and Enablement in Amgen v. Sanofi by MaxDrei https://patentlyo.com/patent/2018/08/rejoining-description-enablement.html#comment-412781 Wed, 15 Aug 2018 14:27:52 +0000 https://patentlyo.com/?p=24091#comment-412781 I’m not suggesting it is new. Just that under FtF it will assume greater importance in the administration of justice and the resolution of disputes between rival filers at the USPTO. There are more than 1000 trials of patent validity, between rival parties, at the EPO, each year. A high proportion of them are between parties who file heavily and continuously, on similar subject matter. Representing these parties is how I earn my crust.

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Comment on Rejoining Written Description and Enablement in Amgen v. Sanofi by Confused https://patentlyo.com/patent/2018/08/rejoining-description-enablement.html#comment-412780 Wed, 15 Aug 2018 14:24:46 +0000 https://patentlyo.com/?p=24091#comment-412780 Public Law 103-465, as approved by Congress (link to transition.fcc.gov), includes the following:

“SEC. 315. OBJECTIVES IN INTELLECTUAL PROPERTY.
It is the objective of the United States-
(1) to accelerate the implementation of the Agreement on Trade-Related Aspects of Intellectual Property Rights referred to in section 101(d)(15),
(2) to seek enactment and effective implementation by foreign countries of laws to protect and enforce intellectual property rights that supplement and strengthen the standards of the Agreement on Trade-Related Aspects of Intellectual Property Rights referred to in section 101(d)(15) and the North American Free Trade Agreement and, in particular-
(A) to conclude bilateral and multilateral agreements that create obligations to protect and enforce intellectual property rights that cover new and emerging technologies and new methods of transmission and distribution, and
(B) to prevent or eliminate discrimination with respect to matters affecting the availability, acquisition, scope, maintenance, use, and enforcement of intellectual property rights, …”.

It is noteworthy that Congress elected only to amend US patent law by changing to a 20 year patent term … but at the same time made it a formal objective of the US to ensure that there was “enactment and effective implementation” of the full TRIPS agreement in FOREIGN countries.

Is this another case of cake and eat it? On the basis of that law, I guess that those seeking to force the US to honour its obligations under TRIPS are out of luck … unless they are able to persuade another WTO Member State to initiate a dispute resolution process at the WTO.

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Comment on Rejoining Written Description and Enablement in Amgen v. Sanofi by MaxDrei https://patentlyo.com/patent/2018/08/rejoining-description-enablement.html#comment-412779 Wed, 15 Aug 2018 14:01:30 +0000 https://patentlyo.com/?p=24091#comment-412779 That’s a very interesting observation, thanks, Confused.

Indeed, the “plausibility” test criterion troubles many people. But I’m not one of them. My practice is largely with oppositions at the EPO, where the OD and the TBA has to find a way to do justice between the opposed sides, upholding good patents and striking down bad ones.

Setting the terms of the validity debate around the concept of plausibility allows both sides to set out their case optimally. Do you disagree? Do you think it skews the result unfairly?

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Comment on Rejoining Written Description and Enablement in Amgen v. Sanofi by MaxDrei https://patentlyo.com/patent/2018/08/rejoining-description-enablement.html#comment-412778 Wed, 15 Aug 2018 13:51:56 +0000 https://patentlyo.com/?p=24091#comment-412778 The proposition is that the K salt is, surprisingly, a “better” analgesic than the Na or Rb salt.

There is no “new use”. It is just that if you take of the K salt the SAME dose as the Na salt, your headache dissipates significantly faster.

To deny enablement of the K salt strikes me as a false road to take, destined to end in less rather than more legal certainty, less rather than more justice.

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Comment on Rejoining Written Description and Enablement in Amgen v. Sanofi by anon https://patentlyo.com/patent/2018/08/rejoining-description-enablement.html#comment-412777 Wed, 15 Aug 2018 13:51:12 +0000 https://patentlyo.com/?p=24091#comment-412777 Not what I am suggesting.

And thank you for above distinguishing that which MaxDrei appears to desire to conflate.

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