Patent Prosecution Update
November 2014
Claim with Omitted Material Limitation May Not Be Asserted Before Correction
When a patent issues with a mistake, a certificate of correction can be obtained to correct it under certain circumstances. 35 U.S.C. §§ 254, 255. When an issued claim “omits a material limitation, and such omission is not evident on the face of the patent, the patentee cannot assert that claim until it has been corrected by the PTO.” H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1335 (Fed. Cir. 2014). More
Means-Plus-Function Claims Require Disclosure of Means
In its decision in Robert Bosch, LLC v. Snap-On Inc., No. 2014-1040 (Fed. Cir. Oct. 14, 2014), the Federal Circuit considered whether certain claim elements (“program recognition device” and “program loading device”) should be interpreted as means-plus-function terms under 35 U.S.C. § 112, ¶ 6 (pre-AIA designation), notwithstanding the absence of the word “means” in these elements. In finding that the elements were indeed properly interpreted as “means-plus-function” claims, the lack of corresponding structure for the means in the specification doomed the claims as indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA designation). More
Claim with Omitted Material Limitation May Not Be Asserted Before Correction
When a patent issues with a mistake, a certificate of correction can be obtained to correct it under certain circumstances. 35 U.S.C. §§ 254, 255. When an issued claim “omits a material limitation, and such omission is not evident on the face of the patent, the patentee cannot assert that claim until it has been corrected by the PTO.” H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1335 (Fed. Cir. 2014). More
Means-Plus-Function Claims Require Disclosure of Means
In its decision in Robert Bosch, LLC v. Snap-On Inc., No. 2014-1040 (Fed. Cir. Oct. 14, 2014), the Federal Circuit considered whether certain claim elements (“program recognition device” and “program loading device”) should be interpreted as means-plus-function terms under 35 U.S.C. § 112, ¶ 6 (pre-AIA designation), notwithstanding the absence of the word “means” in these elements. In finding that the elements were indeed properly interpreted as “means-plus-function” claims, the lack of corresponding structure for the means in the specification doomed the claims as indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA designation). More
Design Patents
Who Dunnit?: Design Patents Cover “Designs,” Not “Design Concepts”
Read
Rule Review
Obviousness-Type Double Patenting
Read
EPO Practice
Priority Pitfalls in European Patent Applications Based on U.S. Priority Applications
Read
At the Federal Circuit
Affirmatively and Knowingly Misrepresenting Prior Art Constitutes Inequitable Conduct
Read
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Eric P. Raciti, Editor-in-Chief
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Clara N. Jiménez, Associate Editor
Eric P. Raciti, Editor-in-Chief
J. Derek McCorquindale, Associate Editor
Clara N. Jiménez, Associate Editor
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