Patently-O Bits and Bytes No. 11

  • Pharma/Biotech Patent Claim Drafting and Prosecution: West Coast patent attorneys Joyce Morrison and Robin Silva are chairing the ACI pharma/biotech patent drafting and prosecution conference Feb 25–26 in New York City. Donald Zuhn of PatentDocs will be signing autographs and PTO officials (including TC 1600 Director Kisliuk) will explain the new PTO examination mindframe. Patently-O readers use Keycode SP1 to save $200 on the registration fee: www.americanconference.com/claimdrafting.
  • Duke IP & Cyberlaw folks are hosting their annual “Hot Topics” workshop on Feb 29 in Durham. I had a wonderful time at last year’s event, but won’t be able to make it this year. The program includes a big discussion of Tafas v. Dudas. [LINK]
  • E.D.Texas Jury: $431 Million to Doctor Bruce Saffran from Boston Scientific. [Link][Patent]
  • PatentLawPic203Best name for a patent enforcement company: the “National Institute for Strategic Technology Acquisition and Commercialization” has just sued Ford. NISTAC is a non-profit run by K-State. Interestingly, according to Stu Soffer the patents were originally owned by Ford and then donated to the predecessor of NISTAC in 1997. (Ford claimed a charitable deduction of $27 million). The patents were listed as for sale in the April 2006 Ocean Tomo auction, but were were withdrawn prior to live bidding.
  • Congratulations to Jennifer Kurcz; David Ciesielski; and Paula Fritsch who recently became partners at MBHB LLP. We started as first-year associates on the same day way back when.
  • Patent Law Jobs posted in the last two weeks:

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

25 thoughts on “Patently-O Bits and Bytes No. 11

  1. Leveraging IP just means that you’re giving a license to a patent or patent/IP portfolio, or asserting the patent or patent/IP portfolio against a competitor. Usually though, it refers to licensing.

    You identify entities that may be or may want to be using ideas that you have patented, and you offer them a license for a fee. You negotiate a license and sign a contract.

    The identification is the tough part. That’s why you see some of the big patent holders talking about “leveraging” now.

  2. Recently I came across note on Leveraging IP. How pharmaceutical industries Leverage their IP (Mainly Patent)? What are the steps involve in this process? Let me know any reading material on this subject.

  3. Recently I came across note on Leveraging IP. How pharmaceutical industries Leverage their IP (Mainly Patent)? What are the steps involve in this process? Let me know any reading material on this subject.

  4. No, he really means “contemplated”, they don’t know one way or other and I know why they don’t know one way or other. Right now if that language were left in I couldn’t substantitively reject it without taking out all that functional language as being only functional language and using the relevant FP caselaw. If he gets to keep the language, it’s allowed, because it’s assumed he actually did make that thing. He would have been the first to discover that after all, how could I reject him? Base my rejection on the physics of the situation that are the loose basis for his theory? Sure I have the information maybe to do that, but I’m not smart enough to put it together, I’d have to be a phd in physics AND chemistry in addition to my degree. And that wouldn’t be a reasonable rejection to make anyway.

    Anyway I gtg, I’ve spent too long on this case already, gotta do some ez ones ttyl.

  5. Simulated or predicted test results and prophetical examples (paper examples) are permitted in patent applications. Working examples correspond to work actually performed and may describe tests which have actually been conducted and results that were achieved. Paper examples describe the manner and process of making an embodiment of the invention which has not actually been conducted. Paper examples should not be represented as work actually done. No results should be represented as actual results unless they have actually been achieved. Paper examples should not be described using the past tense.

    Ok, so in this case he did everything right up until “no results should be represented as actual results unless they have been achieved” (what claiming it did) which at this point nobody can actually say if they have been or not. The applicant probably still doesn’t know to this day if they were, much less at the time of filing. He’s gonna have to drop the claim language towards that and I have art on the actual process. I see an appeal in my future.

    O well, next case for now.

  6. I suspect that the person who used the word “contemplated” only meant to use it as a nifty transition word with no particular meaning.

    I feel bad that some inventor will lose his invention or some small company will go bankrupt because of a misinterpretation, deliberate or not, of the use of the word “contemplated” with no particular intent except to break the monotony of a patent application.

    Examiner #6, are there no substantive reasons to reject the patent application?

  7. JV, good call, although in this case, instead of being an example describing an embodiment of the invention based on predicted results we have an example describing an embodiment of the invention based on predicted inherent qualities of the thing.

    This is why I love my art, so many claims to so many things that are inherently a part of the item in question by the laws of nature and they’re laying claim to x application of this inherency because they might be the first to know about this inherent quality. Which, on it’s own isn’t too bad, but when they’re not even sure of the inherency and it’s just an educated guess? I mean come on, give me a break, at some point you gotta draw the line.

  8. Yes there is. Neither this guy, nor his major competitor (which he appears to have beaten to the office and to publication) have verified to any scientific degree of certainty that this composition actually does have those qualities (and that instead there aren’t other qualities which are producing these results they’re getting, though, to be honest, it’s a reasonable theory all told). His only chance for really broad coverage was then, and he’s going to have to rely on me being favorable to his situation, unless he’s got some great proof dated at that date to show me, which he doesn’t, or else he wouldn’t say he still didn’t know about this quality 4 months later in his publication.

    This is what happens when bleeding edge research tries to get a patent on the discovery itself rather than a practical embodiment thereof (or at least they rely on the unverified “discovery” to give the claim patatability). They can’t say for sure what it is that is going on, but it’s contemplated that it is. They couldn’t even say for sure 4 months later in a publication, and their competitors couldn’t either 5 months later. It might, in fact, be impossible to verify currently and will need a whole new experiment designed just to see. I don’t think that you guys understand the levels of complexity I deal with on an everyday basis, and if you do, then imagine this case is at the highest levels of what you’re imagining. I’m not even bragging.

    Hah come to think of it, that’s probably why new examiners don’t read the specs (as some claim) because they don’t WANT to know all of your complicated mess. It is, in fact, so complicated that the disclosure, on it’s own, reasonably tells all of 10 people in the whole US what to do, and even then on a purely theoretical basis. Sure, that might be the ordinary skill level between those 10 people in that niche, but some arts have people over here that don’t know very well what goes on over there and shouldn’t reasonably be expected to.

    JV that’s interesting I’ll check out the MPEP section too.

  9. There’s a patent bar question that involves a very similar issue. Take a look at question 6 on the October 2003 exam, and at the PTO’s explanation of the answer to the question. Also, look at the discussion in the MPEP related to “prophetic inventions”

    exam
    link to uspto.gov

    explanations
    link to uspto.gov

  10. “It is contemplated that x consists of y”

    That strikes me as a very risky way to describe x. I might occasionally use the word “contemplate”, but usually for something like “It is contemplated that X may also comprise B,C, or D,” and then only when I’ve already demonstrated clearly how the invention works when X comprises A.

  11. I will give you that, however, as it is merely the contemplation of what this substance is comprised of then a claim to it as “using x process TO MAKE (the thing that was contemplated)” I’m not going to be able to let this one slide, when really all he did was use x process and then put some functional language. I’ll get it taken out either way, may as well start off with the most embarrassing, this is that one app that cried about the species that he needs. As you said… case by case. In any case, my primary will look it over he’s usually on top of this type of thing pretty good.

  12. “The “contemplation” language merely suggests that the applicant has intellectual possession of the concept, but may not have enabled it”

    I don’t think that’s correct. “Contemplate” means that the applicant has conceived, but may not have actually reduced to practice the particular combination. At most “contemplated” is evidence that the applicant hasn’t actually built the thing.

    So the question would then be whether what’s in the application constitutes a constructive reduction to practice. If an invention is contemplated, fully described, and works as the inventor suggests, then there just isn’t any evidence from the use of the word contemplated that the inventor did not have possession of the invention. There is simply no requirement that a claimed invention be built and tested before an application is filed just as there is no requirement that an applicant perform a search to confirm their belief that they’ve invented.

    There may be other facts involved that do raise an issue, but what’s posted here isn’t even a close case.

  13. “That’s a pretty good way of putting it, but I think in my case there might even be more to it.”

    Absolutely, it’s a case-by-case thing that depends upon the level of ordinary skill and what one having that skill could achieve after reading the application.

    I think you’ll find that the “it is contemplated” language is jargon for “we haven’t made a prototype, but we think it will work without undue experimentation so we’re mentioning it.” In other cases, however, it may just be jargon with no particular meaning intended.

  14. Sounds good, yeah I would say that if he doesn’t know it yet, and also, at the time of filing, nobody did, then his contemplation of the subject would require undue experimentation.

    That’s a pretty good way of putting it, but I think in my case there might even be more to it.

    Thanks though.

  15. “POP QUIZ: If the specification states that “It is contemplated that x consists of y” and they subsequently claim x consisting of y, is there an issue under 112? If the applicant doesn’t know what he’s doing (he’s just contemplating) isn’t there a question as to if that is actually his invention?”

    Yes, there is a potential issue. But there is nothing in the phrase “it is contemplated” that necessarily affects enablement. Either the “contemplated” embodiment requires undue experimentation or it does not. Period. The “contemplation” language merely suggests that the applicant has intellectual possession of the concept, but may have not enabled it.

    “K, so if I contemplate a spaceship that can travel over the speed of light and I claim 1. a spaceship that travels over the speed of light. There will be no issue under 112?”

    Your revised hypothetical assumes a new fact (travelling over the speed of light) that clearly would require undue experimentation, to say the least. But as in all hypotheticals regarding enablement, the issue is whether undue experimentation is required — not whether the applicant mentions something as a possibility or as a contemplation.

  16. To be more specific, I don’t put this down under “not supported”, I put this down under “evidence that applicant was not in possession of the invention at the time of filing”

    as in Claim language directed to x and x2 of product z are not supported by the applicant’s disclosure in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. Evidence that the applicant lacks possession of the current invention can be found on the page saying that this subject matter is merely a contemplation of the inventor at the time of filing.

  17. K, so if I contemplate a spaceship that can travel over the speed of light and I claim 1. a spaceship that travels over the speed of light. There will be no issue under 112?

    What if I contemplate a machine that can directly transfer every last page of the MPEP directly to my long term memory? No issue under 112 again?

  18. “Early opinions suggest the Patent and Trademark Office was unwilling to find written descriptive support when the only description was found in the claims; however, this viewpoint was rejected. See In re Koller, 613 F.2d 819, 204 USPQ 702 (CCPA 1980) (original claims constitute their own description)” MPEP 2163.

    It’s a good resource. You should read it.

  19. “POP QUIZ: If the specification states that “It is contemplated that x consists of y” and they subsequently claim x consisting of y, is there an issue under 112?”

    No.

  20. POP QUIZ: If the specification states that “It is contemplated that x consists of y” and they subsequently claim x consisting of y, is there an issue under 112? If the applicant doesn’t know what he’s doing (he’s just contemplating) isn’t there a question as to if that is actually his invention?

    I need the best and brightest on this one. Is Newman around? She was in the lab iirc.

  21. “More importantly, is Ford bound by assignor estoppel?”

    … and even if they aren’t, I’d love to get someone from Ford on the stand and ask them why they took a $27 million tax deduction for a patent that they now claim is invalid.

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