Patent Prosecution Update
May 2011
Patent Profanity and Its Haunting Effects
The claims of a patent determine the limits of its enforceable property right. However, the scope of a patent’s claims often is a highly contested issue. When a patent is the subject of a lawsuit, courts begin their assessment of the case by interpreting the contested claim language. The Patent Act lends little guidance to the interpretation. Instead, courts have broad discretion, guided by Federal Circuit precedent, in giving meaning to claim terms. To identify the meaning of a particular claim term, courts typically look to the specification and the prosecution history. Once the court determines the metes and bounds of a claim, it then can begin its infringement analysis. More
USPTO Program Gives Applicants More Time to Decide on Pursuing a Patent
The U.S. Patent and Trademark Office (USPTO) recently began piloting an Extended Missing Parts Program (Program). According to the USPTO, the Program is expected to benefit applicants by inexpensively permitting additional time for determining if patent protection should be sought, thereby allowing applicants to focus resources on commercialization efforts during the extended period. The Program benefits the USPTO and the public at large by (1) removing from the USPTO’s backlog those applications for which examination is no longer desired and (2) adding publications to the body of prior art. See Pilot Program for Extended Time Period to Reply to a Notice to File Missing Parts of Nonprovisional Application, 75 Fed. Reg. 76,401 (Dec. 8, 2010). More
Patent Profanity and Its Haunting Effects
The claims of a patent determine the limits of its enforceable property right. However, the scope of a patent’s claims often is a highly contested issue. When a patent is the subject of a lawsuit, courts begin their assessment of the case by interpreting the contested claim language. The Patent Act lends little guidance to the interpretation. Instead, courts have broad discretion, guided by Federal Circuit precedent, in giving meaning to claim terms. To identify the meaning of a particular claim term, courts typically look to the specification and the prosecution history. Once the court determines the metes and bounds of a claim, it then can begin its infringement analysis. More
USPTO Program Gives Applicants More Time to Decide on Pursuing a Patent
The U.S. Patent and Trademark Office (USPTO) recently began piloting an Extended Missing Parts Program (Program). According to the USPTO, the Program is expected to benefit applicants by inexpensively permitting additional time for determining if patent protection should be sought, thereby allowing applicants to focus resources on commercialization efforts during the extended period. The Program benefits the USPTO and the public at large by (1) removing from the USPTO’s backlog those applications for which examination is no longer desired and (2) adding publications to the body of prior art. See Pilot Program for Extended Time Period to Reply to a Notice to File Missing Parts of Nonprovisional Application, 75 Fed. Reg. 76,401 (Dec. 8, 2010). More
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