On LinkedIn I’m asking folks about continuation practice: Should it be OK to amend claims in a continuation to cover a competitor’s new product?
I don’t think I’ve seen such a lopsided poll outcome in quite a while with 93% so far indicating “Yes” it should be OK, assuming that the new claims create no enablement or written description problem. There is still time to add your vote. (I think you have to login to vote).
Kind of apropos of nothing, I offer this anecdote regarding continuation practice.
As we all know, there is a risk in any related application of the Examiner uncovering new art or developing a new, better rejection strategy.
This morning I received an office action in a first continuation that cited a new piece of art that is a 102 reference and a good one against the claims in the parent application. Ok that happens.
What’s bizarre is the Examiner didn’t note the Preliminary Amendment and applied the art against the claims of the patent application, now a US Patent. So the invalidity argument is now express not just implied.
Odd thing is, there is also a European counterpart where the EP Examiner/Searcher didn’t come up with this art, either, so I felt at low risk of this development.
Crazy.
You might be able to have the mistaken rejection withdrawn and redacted from the file history. That said, you’re “on notice” as to the art and the arguments so you’ll probably want to file the papers in your IDS regardless …
Redacted….?
This, from the guy that wants a literal recording of all verbal interviews with examiners explicitly on the record?
FB,
Yes, that is a an eventuality. The way that I look at though is better at that point (much better during the parent prosecution, of course), than during enforcement. You still have a live app to deal with the situation as well.
Redacted = withdrawn and removed from the file history because it was a mistake and does not belong there.
If the PTO sends me a rejection of a claim set **that I never presented** and admits that the rejection was an error, what is the point of leaving that paperwork in the file history?
It’s directly in the family.
Try again.
What about this scenario? [1] A patent discloses numerous embodiments that have overlapping subsets of features or aspects, with the standard boilerplate language that invention is not limited to the disclosed embodiments but can combine any of the features or aspects disclosed in connection with one or more embodiments. [2] Competitor produces a product that (a) does not match any one single embodiment and (b) combines some (but not all) of the disclosed features or aspects in a manner that is advantageous over each of the expressly disclosed embodiments, akin to an unexpected results argument (for non-obviousness)? Presumably no 112 problem then but seems unfair that competitor’s contribution can be captured by patentee in continuation application.
This is a similar question to that raised in DVan’s comment at 1.1.1. below. CAFC case law has been grappling with variations on this theme for a long time, i.e., when do laundry lists of Markush group components become patentable disclosures satisfying the written description requirement. There’s a few factors involved — the skill and predictability in the art, particularly — but there seems to be a requirement for “ascertainability” by the artisan in order to maintain a valid patent.
On the flip side, there is the question of when disclosures that are inadequate for parenting purposes nevertheless become prior art. Note that the law is relatively clear that the disclosure of a synthesizable structure suffices to nullify its patentability as such, even if that structure is one of ten thousand listed in a book somewhere. Someone may discover later that the structure has a fantastically desirable property but the structure itself is out of reach of the patent system.
“when disclosures that are inadequate for parenting purposes nevertheless become prior art”
lol – pray tell how that happens. you cannot have it both ways, you anti-patent lout.
Repeat of: link to patentlyo.com
A disclosure that may not satisfy enablement and/or written description could still be relied upon for an art rejection, alone or in combination with other references. One can rely upon another reference to show an anticipating reference is enabled.
That does not make sense – you give that it cannot enable, yet want it to enable a totally separate reference…
This ‘rings’ of past discussions of science fiction.
MPEP 2131.01 cites situations and cases for when more than one reference can be relied upon for anticipation.
“Normally, only one reference should be used in making a rejection under 35 U.S.C. 102. However, a 35 U.S.C. 102 rejection over multiple references has been held to be proper when the extra references are cited to:
(A) Prove the primary reference contains an “enabled disclosure;”
(B) Explain the meaning of a term used in the primary reference; or
(C) Show that a characteristic not disclosed in the reference is inherent.
See subsections I-III below for more explanation of each circumstance.”
Indeed, one can enable a single species, which would be enough to anticipate a genus, even though the genus is not enabled.
PM – your assertion still does not reach – again, you included the notion that the reference does not meet enablement, and yet want to use that for enablement of another reference. If it won’t do for itself, it certainly won’t do for a completely different reference.
Also, please do not use the MPEP for your support – as you well know, that does not have the force of law AND is well known for misrepresenting law in a number of areas.
The MPEP cites to cases for using other references to show enablement of a reference lacking enablement. I just included the bases for relying upon other references.
I am not sure what you are misunderstanding. I am not saying you can use a non-enabled reference to show enablement of another reference. I am saying you can use another reference to show enablement of a non-enabled reference.
Still off — this is NOT a matter of using a reference that HAS or SHOWS enablement to buttress another, but rather attempting to use a reference — in and of itself — that does not have or show enablement for the very purpose of enablement of some other reference.
As my friends from Boston used to say, “You can’t get there from here.”
… in other words, you have moved the goalposts and are stressing a point that is simply not AT point.
I was responding to this.
““when disclosures that are inadequate for parenting purposes nevertheless become prior art”
lol – pray tell how that happens. you cannot have it both ways, you anti-patent lout.
Repeat of: link to patentlyo.com”
A disclosure inadequate for patenting purposes can become prior art. That was my only point.
Your point remains off, as you appear to be missing a contextual c1ue.
As noted, this is reminiscent of the discussion of science fiction as prior art.
It’s a lopsided response because it’s a lopsided hypothetical. Most times if you are only claiming something once it’s been adopted you likely don’t truly have WD/enablement. There’s also something to be said for some kind of infringement defense if the patentee encourages the adoption prior to prosecuting the claim, but that doesn’t mean the claim shouldn’t issue.
Random, it is not clear what you mean by “lopsided hypothetical.”
Also, your feelings that there should be ‘some kind of defense’ is utter nonsense. It shows a complete lack of ever having worked in the real world.
Let me guess: you became an examiner right out of college.
Leaning toward yes, but wondering why Congress hasn’t enacted an intervening rights defense for non-reissue patents.
Why would they? Better question: why should they?
Why wouldn’t it be OK?
It’s not like patent practitioners ever argue that that picking and choosing non-committal boilerplate within a single reference is improper hindsight with respect to obviousness, so why should it be any different with respect to support and written disclosure?
Professor Crouch,
Think there needs to be a variant of this poll: Should it be ok to amend/draft claims in a continuation to cover an industry standard?
Interesting question, but one that speaks MORE to any required diligence of those setting industry standards and LESS to any underlying patent issue.
Not at all. Standards setting organizations are not equipped to handle searching patent applications, and in many cases it’s not possible to do so because the patent applications haven’t published while the key standards setting activity is going on.
What frequently happens (~5 cases* I’ve handled in the last four years) is someone drafts a very broad specification, while the original invention itself was quite narrow. Two continuations later, someone realizes that some throwaway language in the specification combined with other throwaway language could conceivably support claims that read on the standard. One issue is that prosecuting attorneys draft very broad specifications that aren’t related to what the inventors actually did.
*I’m not talking about a situation where a party attended standards setting meetings and filed a patent application related to those activities. I’ve handed those as well, and that’s a very different set of issues.
Ah, Mister SS,
You again show why you could not even make the wiffle ball team.
First off, you are simply incorrect in that Standard setting organizations ARE equipped to handle searching patent applications (and even can contractually bind those seeking to influence the standard against the unpublished cases).
Second, what you errantly assert as “throwaway” and “original invention itself” are actually the normal crafts of the art. It is a feature – not a bug. Had you any insight into prosecution, you would realize that we routinely craft legal documents that capture more than embodiments that an inventor may have at her top of mind, but reach full scope of the invention. Those who understand this would never use the words that you have used.
First off, you are simply incorrect in that Standard setting organizations ARE equipped to handle searching patent applications (and even can contractually bind those seeking to influence the standard against the unpublished cases).
This misunderstands how standards setting organizations operate: they require disclosure of IP from participants. But that’s not the same as searching for patents/patent applications belonging to non-participants. And it certainly isn’t the same as patents/patent applications belonging to non-participants that, at the time the standard was being worked on, didn’t even participate in the area the standard covers.
Second, what you errantly assert as “throwaway” and “original invention itself” are actually the normal crafts of the art. It is a feature – not a bug. Had you any insight into prosecution, you would realize that we routinely craft legal documents that capture more than embodiments that an inventor may have at her top of mind, but reach full scope of the invention. Those who understand this would never use the words that you have used.
THANK YOU.
You’ve finally admitted to the entire NPE scam.
A patent isn’t a hunting license: it’s a reward for inventing something and disclosing that to the public. When parties draft claims covering what others are doing, and the basis for saying they invented it is just some language a lawyer came up with, that turns the whole system upside down.
… and thank you for proving my point.
“First off, you are simply incorrect…
This misunderstands how standards setting organizations operate…”
Wrong and wrong – you have misundersood my comment. Standard setting organizations are fully capable of vetting the landscape to which they desire to set standards – perhaps even better than anyone else. That they may not do so is a fault – you seem to think that such is an excusable one (if you even can figure out that it IS a fault).
As to your double down with “admitting” that you would
F
A
I
L
to even make the whiffle ball team, that you think my comment to be some type of admission – let alone an admission as to NPE activity, you could not be more wrong. What I state is standard practice across the board – and simply NOT an “NPE gimic.” What a litigator you are to jump to such an errant conclusion.
Your statement of “not a hunting license” is a non-sequitor. Nothing in my comment is to indicate that one is seeking a hunting license (putatively, for what is not encompassed in the legal document that a patent is). That you think “some basis is… some language a lawyer came up with” only exemplifies that you do not understand – at all – the role of language IN patents.
You should likely go into some other area of litigation. Not understanding even the basics of the topic that you are wanting to litigate in is a recipe for disaster.
If the bargain an inventor makes with the US government is full disclosure for a limited monopoly, it should not matter when the inventor appreciates a broader claim. The inventor satisfied his obligation at the time of filing and the limited time of monopoly does not change nowadays with late claiming.
+1
It’s not uncommon for inventors (and sometimes, their attorneys) to not appreciate at the outset the full scope of what they have invented, or which aspects of the invention turn out to be the indispensable or groundbreaking ones.
It depends on whether you invented the product. If you did, it’s rather curious that your previous patenting attempts somehow missed that product.
You’ve loaded the dice on the question by saying “assuming enablement/WD”, but doctrinally of course it’s correct that if there is such support, you have by definition “invented” the product or some aspect of it.
It doesn’t bode well if you “invented” something and didn’t even realize it until you saw someone else’s product embody that invention.
Not necessarily. In pharmaceuticals, especially small molecule organics, chemical structures are often described using multiple Markush groups that are based on a limited number of examples. There may be several hundred examples that were actually made, but a core structure having several Markush groups in different locations around the core could easily encompass millions, if not billions, of different molecules. Most structures covered in those billions may have never been contemplated for synthesis by the inventors, so you can’t say they “invented” those molecules.
^^^
I would fold this into my larger topic of Pharma and possession at the time of filing.
Or, a competitor designed around your claims making a minor change that takes them out of literal infringement. You can try to rely upon doctrine of equivalents (good luck), or you write claims that capture the competitor.
This sounds in Malcolm’s “picture claim – exacting (objective) physical structure” as the only ‘real’ claims that be “patent worthy.”
Of course, his very real cognitive dissonance on the history of actual innovation protection cannot stand up to any level of scrutiny.
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