Patently-O Bits and Bytes by Juvan Bonni

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16 thoughts on “Patently-O Bits and Bytes by Juvan Bonni

  1. 3

    Thanks Max. Your response that “If one is a div of the other, the EPO insists that the respective applications claim distinctly different inventions” and “..the EPO can object, citing the “general principle” of only one patent per invention” [even in other cases] refutes recent legislation-promotion statements on another blog that only the U.S. has double-patenting rejections.

    1. 3.1

      Paul, I wonder what prompted the observation in that other blog that “only” the USA has double patenting objections. Perhaps only the USA needs them.

      I’m thinking that perhaps it is unique features of US patent law that render double patenting likely to occur unless objections are made. I have in mind the combination of i) unlimited generations of continuing applications and ii) reduced prior art effect of applicant’s own earlier filings.

    2. 3.2

      Probably what they meant is that only the U.S. has obviousness type double patenting (although Canada also has that category of legal defect for patent claims). Pretty much every jurisdiction recognizes a category of defect for what we would call “statutory” double patenting.

    3. 3.3

      Yes, there are two prior art “exceptions” in U.S. 102 (b) & (c) that make only double-patenting available more often.

    1. 2.1

      And the conservative-led Supreme Court (for about 50 years now) has been decimating patent rights for a good portion of the last half-century.

      What of it?

      1. 2.1.1

        It certainly does not help personal property rights in the mantra of that Sprint Left.

        You cannot possibly disagree with that assessment, can you?


          You cannot possibly disagree with that assessment, can you?

          What specifically is “It” as part of “It certainly”?
          What personal property rights are being implicated?
          What is the “mantra” in that Sprint Left?

          When I know more about what you are referring, I can then agree or disagree with that assessment.

          My point … in case it isn’t clear … is that BOTH the left and right have not been friendly to patents. As such, I see little reason to distinguish between the two. They are both bad actors as far as I’m concerned.


            The sentence is clear as stands.

            While I will certainly agree that both sides of the aisle have been less than friendly to patent rights, there is no doubt that the ideological Left abhors the notion of personal property.

  2. 1

    Since there have been many complaints about claims lost in IPRs in articles and blog comments, one main reason almost never discussed is the mistakes many patent owner attorneys continue to frequently make in their IPR defenses. Several are listed and discussed on today’s “Patents Post-Grant” Blog. Any client hit with an IPR would be well advised to read it and pass it on, especially if their attorney is not a frequent IPR defense attorney with a good established track record.

      1. 1.1.1

        The specific article title is ‘Why Do Patent Owners Keep Making the Same PTAB Mistakes?” November 17, 2022 by Scott McKeown. A point is that the kind of non-technical patent validity arguments made to juries by district court litigators can be an ineffective turn-off to APJs who’s full time job has been and is PTO unobviousness determinations based on specific prior art technical disclosures vs specific claims.


          Hadn’t seen that blog before, Paul. Enjoyed the piece. But then I would wouldn’t I, being one who routines argues post-grant oppositions at the EPO before panels of EPO Examiners, and before the promoted ex-Examiners who are now the judges on the EPO’s Boards of Appeal.

          For counsel defending the granted patent to mess up has serious consequences: revocation of the patent throughout the 39 country 600 million consumer EPC territory.


            Max, off topic, but if the EPO does not have either statutory-literal or obviousness-type double patenting, what do they do when they discover the same applicant has two pending applications that as claim-amended in prosecution are claiming the same invention, literally or patentably indistinctly, and are not prior art against one another?


              So, Paul, three thoughts:

              1. In order to co-exist with each other under the EPC, so that one claim is not knocked out by the other filing, both need to be entitled to exactly the same priority date. So they share the same 20 year patent term. I don’t see how one could have a longer term than the other. How much does it matter then, if they co-exist?

              2. If one is a div of the other, the EPO insists that the respective applications claim distinctly different inventions.

              3. The EPO Examiners are supposed to perform “top-up” searches to bring to light any Art 54(3) “secret” prior art, including that of Applicant itself. If they find another application of Applicant that is claiming the same subject matter, the almost inevitable consequence is that one invalidates the other. If not, if they both have the same date, the EPO can object, citing the “general principle” of only one patent per invention. Currently, there is controversy about EPO management’s efforts to raise productivity, leading to skimpage on the top-up search activity. It is alleged in some quarters that bad claims are increasingly getting through to grant, leaving to Opponents the burden of striking down those invalid claims.

              More? Just say.


          Harrumph . . . “APJs who’s full time job . . . is to find a way to invalidate patents duly-issued by their Examiner colleagues.”

          But hey, nothing wrong with the Patent Office’s left arm cutting off the right arm, right?

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