- Projected CLE: 6.0 hours
- Price: $995
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Instructors:
Paul Gardner
- Course Times: OCT. 2010: 8:30-11:30; 1:30-5:00 (Tues)
Please note that the faculty member listed for this course is subject to change prior to the actual course date.
Effective preparation and prosecution of a patent application has always been a challenging undertaking, as both the Supreme Court and the legendary CCPA and Federal Circuit Judge Giles Rich (who also co-authored the 1952 Patent Act) have recognized: “The specification and claims of a patent, particularly if the invention be at all complicated, constitute one of the most difficult legal instruments to draw with accuracy.” Topliff v. Topliff, 145 U.S. 156, 171 (1892). “The life of a patent solicitor has always been a hard one.” Application of Ruschig, 379 F.2d 990, 993 (CCPA 1967).
In recent years, the Federal Circuit has made patent solicitors’ lives more difficult in four major respects: (1) interpreting claims unduly narrowly, resulting in judgments of non-infringement; (2) holding broad claims to be invalid under §112, ¶1 for lack of written description support; (3) finding incorporation by reference language in a continuing patent to be inadequate, resulting in denial of priority benefits and consequent anticipation by an ancestral patent in the same chain of related patents; and (4) finding patents unenforceable due to inequitable conduct. The Federal Circuit case law in these four areas is all the more troubling because the Court’s anti-patent holdings have often been based on verbiage of the kind commonly employed by patent attorneys and agents in writing specifications and replies to Office actions, e.g., pointing out disadvantages of the prior art or advantages of “the present invention.” Legal ethics in the context of the practices found by the Federal Circuit to constitute inequitable conduct will be covered from 2:30 to 4:30 p.m.
This one-day course surveys the recent Federal Circuit cases in these areas and analyzes not only the Court’s disconcerting rationale in reaching its judgments, but also practices that may be invoked to avoid the disastrous consequences that befell the patentees involved.