Patents and the Protection of Proprietary Biotechnology Information
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1 Patents and the Protection of Proprietary Biotechnology Information Susan Haberman Griffen Anna Tsang Finnegan, Henderson, Farabow, Garrett & Dunner, LLP May 20, 2005 Page
2 DISCLAIMER These materials are public information and have been prepared solely for educational and entertainment purposes to contribute to the understanding of American intellectual property law. These materials reflect only the personal views of the author and are not individualized legal advice. It is understood that each case is fact-specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, the author and Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. cannot be bound either philosophically or as representatives of various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with the author or Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. While every attempt was made to insure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed. Page
3 New Restriction Practice Training at the USPTO Page
4 Requirements for Proper Restriction There are two criteria for a proper requirement for restriction between patentably distinct inventions: The inventions must be independent or distinct as claimed; and There must be a serious burden on the examiner if restriction is required. Page
5 Independent Inventions Independent Inventions Not disclosed as capable of use together Not disclosed as connected in design, operation or effect Page
6 Related Inventions Distinct Inventions Subcombinations useable together Combination/Subcombination Process and Apparatus for its Practice Product and Process of Making Apparatus and Product Made Product and Process of Using Intermediate/Final Product Special case: Product, Process of Making and Process of Using Page
7 Don t forget burden is required! Criteria for Burden 1. Separate classification 2. Separate status in the art 3. Divergent field of search Page
8 Linking Claims What are they? Definition: One or more claims inseparable from claims to two or more otherwise properly divisible inventions. Effect: When found allowable, linking claims prevent maintaining a restriction requirement between inventions that are otherwise divisible. Page
9 Types of Linking Claims Genus claims linking species claims Claim to the necessary process of making a product linking proper process and product claims Claim to means for practicing a process linking proper apparatus and process claims Claim to the product linking a process of making and a process of using Page
10 If there is a linking claim? If a generic or linking claim is subsequently allowed, the restriction requirement MUST be withdrawn, even where claims to non-elected linked inventions have been canceled. The indication of withdrawal must also be clearly stated on the record. When a restriction requirement is withdrawn, 35 USC 121 no longer shields claims from double patenting considerations Page
11 Example Claim 1. A composition for reducing HIV viral load in an HIV infected patient, comprising an agent inhibiting viral replication and a pharmaceutically acceptable carrier. Claim 2. The composition of claim 1, wherein the agent is a polypeptide having the amino acid sequence of SEQ ID NO:2. Claim 3. The composition of claim 1, wherein the agent is a polynucleotide having the sequence of SEQ ID NO:5. Claim 4. The composition of claim 1, wherein the agent is 3,3 -methoxysilyl-3,3 -organophosphate. Page
12 Example Restriction: Group I: claim 2 Group II: claim 3 Group III: claim 4 Claim 1 is a linking claim. If claim 1 allowed, restriction is withdrawn and the linked inventions are rejoined together. Page
13 Markush Practice Markush Practice: selected from the group consisting of, or any of A, B or C or chosen from A, B, or C It is improper for the Office to refuse to examine unless claim lacks unity of invention. Page
14 Markush Practice Apply In re Harnish test for unity of invention Compounds have a common utility Compounds share a substantial structural feature disclosed as being essential to that utility. If members of Markush group sufficiently few in number or so closely related that search can be without serious burden, examiner must examine even though directed to independent and distinct inventions. Page
15 Don t Forget Rejoinder Restriction between product and process claims Applies only where the product claims are elected Requires allowable product claim Applies only to process claims that depend from or include all the limitations of the allowable product claim. If product and process of making and/or using is disclosed but only the product is claimed, and a product claim is allowed, process claims may be entered prior to final rejection. Or use RCE (less expense than new case). Page
16 Restriction Practice If you receive a restriction requirement, you can traverse it or acquiesce in it If you acquiesce in the requirement, you will need to file separate divisional applications for the claims in each of the groups Traversal means to argue against the restriction requirement If you traverse, you are arguing that the inventions of the different groups are not patentably distinct. This could have limit your ability to later argue that prior art relevant to the claims of one group is not relevant to all of the claims Page
17 Restriction Practice If you acquiesce in a restriction requirement and file divisional applications, those divisional applications will expire 20 years from the filing date of your application which received the restriction requirement. The exception is for divisional applications filed before June 8, These divisional applications can expire 17 years from the date of issue. Page
18 Restriction Practice If you acquiesced in a restriction requirement and filed divisional applications before June 8, 1995, you must be sure that the claims you prosecute in each divisional are consonant with the restriction requirement Consonant with the restriction requirement means that the each divisional contains only claims corresponding to one of the Examiner s original groups Page
19 Continuation Applications Divisional applications Continuation applications Continuation-in-part applications Page
20 Continuation Applications Continuing applications under 35 U.S.C. 120 have the same effective filing date as their parent application if: It is filed before the prior application is abandoned or issued It is amended to refer to the prior application There is at least one common inventor The claims in the continuing application are supported by the specification of the prior application as required by 35 U.S.C. 112, first paragraph (best mode, written description, enablement) Page
21 Continuation-in-Part Applications Continuation-in-part applications contain new matter as compared to the prior application,while divisional and continuation applications do not Page
22 Continuation-in-Part Applications This new matter may or may not be necessary for the claims to be supported as required by 112, first paragraph (best mode, written description, enablement) If the new matter is required for 112 support, then those claims will not be entitled to the prior application filing date If the new matter is not required for 112 support, then those claims will be entitled to the prior application filing date Page
23 Request for Continued Examination Adopted on May 29, 2000 as an alternative to filing continuation applications (not available for applications filed before June 8, 1995) To start an RCE, you need to file a request, a submission, and pay a fee. The submission includes, among other things, an IDS, a response to any outstanding Office Action, and new arguments or evidence in support of patentability Page
24 Request for Continued Examination Comparison of RCE to a continuation application Fee for filing an RCE may be less depending on the number of claims Filing an RCE can lock in term adjustments An RCE is limited to the same invention that was prosecuted in the application in which the request was filed Page
25 Request for Continued Examination Strategic considerations when evaluating whether to file an RCE or a continuation application If a different invention is to be examined in the future, e.g., in a divisional, you cannot use an RCE If there is an outstanding Office Action, if you file an RCE you must include a complete response to the Office Action. If such a response is not available, you must file a continuation application Page
26 Request for Continued Examination Strategic considerations when evaluating whether to file an RCE or a continuation application (cont.) The filing fee for an RCE is the same as the basic filing fee for the continuation application. However, if you have many claims, the RCE would be less costly Filing a continuation could trigger publication of an application filed after November Filing an RCE does not trigger publication Page
27 Request for Continued Examination Strategic considerations when evaluating whether to file an RCE or a continuation application (cont.) If you want to take advantage of 103(c) for an application filed before November 29, 1999, you must file a continuation application instead of an RCE Page
28 Preparing for an Appeal Page
29 Cases Pending 9,000 8,000 7,000 6,000 5,000 4,000 3,000 2,000 1,000 Board of Patent Appeals and Interferences Ex Parte Cases Year Page
30 Board of Patent Appeals and Interferences Cases Received 4,500 Ex Parte Cases 4,000 3,500 3,000 2,500 2, Year Page
31 Requirements for Appeal Claims are twice rejected 37 CFR 1.191(a) or Final Office Action Page
32 Should we appeal? Factors to Consider The Examiner is your friend. Consider your relationship with the Examiner in this and other cases. How many of your cases are with this Examiner? History with the Examiner client & attorney Page
33 Preparing Case for Appeal Building a strong record Begins with drafting of application Minimizing the record Cogent and concise arguments Focus on Examiner s burden Focus on the cited art, not claimed invention Page
34 Preparing Case for Appeal Amendment/Declarations If needed, file prior to final Office Action May require Request for Continued Examination to be considered Talk to the Examiner Page
35 Reexamination and Reissue Ways to correct errors in patents Page
36 Reexamination and Reissue Ways to correct errors in patents Reissue of a patent grant that is wholly or partially inoperative or invalid Reexamination to determination the patentability of claims over prior art patents or printed publications Page
37 Reissue Pursuant to 35 U.S.C. 251 Available to correct errors in the specification, drawings, or claims May only be initiated by the patent owner Page
38 Types of errors that can be corrected with a reissue application Reissue Translation errors Claiming the benefit of a prior application Inventorship To provoke an interference Types of errors that cannot be corrected with a reissue application Inequitable conduct Failure to file a continuing application Page
39 Reissue The claims can be amended in a reissue application In a narrowing reissue, the claims are narrowed In a broadening reissue, the claims are broadened Page
40 Broadening Reissue In a broadening reissue Can only broaden claims if the reissue is filed within 2 years of the issue date of the patent May trigger intervening rights Cannot recapture subject matter that was deliberately cancelled in order to secure the original patent Page
41 Reissue To file a reissue application, you must surrender your original patent A reissued patent, if granted, expires on the same date as would the original patent Page
42 Reissue Things to think about before filing a reissue Third parties can protest The Examiner can reject any claims of the original patent Intervening rights may attach Page
43 Reexamination May be requested by anyone, including by the PTO Commissioner Limited to determining the patentability of claims over patents and printed publications Page
44 Reexamination May be requested by anyone, including by the PTO Commissioner Limited to determining the patentability of claims over patents and printed publications Claims may not be broadened Page
45 Reexamination Reexam may be ex parte or inter partes Inter partes reexam has been available since November 29, 1999 Page
46 Reexamination or Reissue Notice of both are published in the Official Gazette Reexam is only available with respect to questions of patentability in view of patents and printed publications Members of the public can only request reexam, not reissue Continuations may be filed in reissue proceedings but not in reexam proceedings Claims can be broadened only in some reissues Page
47 Overview of Interference Practice Page
48 Board of Patent Appeals and Interferences Cases Pending 350 Inter Partes Cases Year Page
49 Board of Patent Appeals and Interferences Cases Declared 140 Inter Partes Cases Year Page
50 First-to-Invent vs. First-to-File United States: First-to-invent Rest of the world: First-to-file Page
51 U.S. Patent Interferences What is it? The system developed to resolve conflicting assertions of first inventorship Page
52 U.S. Patent Interferences USPTO: At least one patent application involved (35 U.S.C. 135) U.S. District Courts: Only issued patents (35 U.S.C. 291) Which of at least two parties is not entitled to interfering patent claims? Page
53 Interfering Subject Matter Interfering subject matter is present when two or more parties present claims that are patentably indistinct from one another Page
54 Interfering Subject Matter Under the New Rules An interference exists in the subject matter of a claim of one party would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the opposing party and vice versa. 37 C.F.R A two-way test Page
55 Possible Result of Two-Way Test Party A (Species) Filing Date 18 Months Issue/Publication Date Filing Date Rejected over Party A 131 Affidavit Issues(?) Party B (Genus) Remember, a species claim anticipates a claim to an encompassing genus BUT a genus claim does not necessarily anticipate a claim to an included species Page
56 Interference Counts A count looks like, but is not, a patent application claim Defines the relevant interfering subject matter Describes the invention you must be first to make if you are to prevail Tells you what priority proofs are relevant Page
57 Interference Counts Often derived from an application or patent claim of a party Count is not necessarily patentable to either party, but must be patentable over the prior art Phantom count Party A claims range of 60 C to 100 C Party B claims range of 75 C to 125 C Count range is 60 C to 125 C Page
58 Interference Counts Or count The invention defined by Claims 1, 4, and 8 of Party A, or Claims 12 and 15 of Party B Common practice because it is easy and fair Page
59 Count Conventions Usually a single count If there are multiple counts, each must be directed to a different patentable invention Priority decided separately for each count Page
60 Count Conventions All patentably indistinct claims are designated to correspond to the count At risk Patentably distinct claims not designated as corresponding to count Not at risk Page
61 Two-Way vs. One-Way Test of Claim Correspondence to a Count A claim corresponds to a count if the subject matter of the count, treated as prior to the claim, would have anticipated or rendered obvious the subject matter of the claim. 37 C.F.R (b)(2) A type of one-way test Page
62 Case 1 Possible Results of Two-Way and One-Way Tests Party A Claims only Species 1 Party B Claims only Genus 1, which subsumes Species 1 but does not render Species 1 unpatentable Result: Because two-way test of interfering subject matter is not met, no interference is declared Page
63 Possible Results of Two-Way and One-Way Tests Case 2 Party A Claims only Species 1 Party B Claims both Genus 1, which subsumes Species 1, and Species 1 Page
64 Result Possible Results of Two-Way and One-Way Tests a) Because two-way test of interfering subject matter is met (with claims of both parties to Species 1) an interference is declared with count directed to Species 1 b) Because one-way test for claim correspondence is met by Count to Species 1 and claim to Genus 1, claims to both Species 1 and Genus 1 are designated as corresponding to count and are at risk in the interference Page
65 Preliminary Motions Filed before first-to-invent is decided Everyone s motions are filed on the same day You can file contingent motions Page
66 Nonpriority Grounds for Decisions Unpatentability Inequitable conduct Abandoned, suppressed, or concealed Derivation 35 U.S.C. 135(b) Page
67 Good Forum for Patentability Attack Can raise any patentability attack (unlike reexamination) PTO is accustomed to ruling that claims are unpatentable Fully Inter Partes (unlike reexamination) No presumption of validity Page
68 Patentability Considerations Successful attack may sink your own ship Successful attack does not resolve priority issue May remain unresolved Prevailing party s patent subject to subsequent challenge under 102(g) May be resolved against party challenging validity No one wins; Perkins v. Kwon Page
69 Inequitable Conduct PTO considers this issue only in interferences Not limited to conduct during interference Prior to 1985 Rules, ancillary to priority Provided basis for priority award Unrelated to who was first Page
70 Inequitable Conduct Now raised by motion under 1.633(a) (Patentability) Concept of ancillary to priority abolished Doesn t resolve priority issue Heavy burden to establish Board may hear live witnesses Page
71 Abandoned, Suppressed, or Concealed Can t rely on date of invention if subsequently abandoned, suppressed, or concealed Mere undue delay created presumption of suppression or concealment Length of delay necessary to create presumption depends on facts (e.g., complexity of invention) Page
72 Abandoned, Suppressed, or Concealed Typically, presumption applies if unexplained delay between reduction to practice and filing reached 20 months Presumption may be rebutted Can abandon, suppress, or conceal and still rely on subsequent activity Page
73 Must show First to conceive Communication to opponent prior to opponent s conception Derivation Don t need to be first to reduce to practice or diligent Discovery Page
74 Date of Invention Conception Reduction to practice Diligence Page
75 Conception: The Idea But not just a general idea, goal, or plan, but a definite and permanent idea of the complete and operative invention Hitzeman v. Rutter, 243 F.3d 1345, 58 U.S.P.Q.2d 1161 (Fed. Cir. 2001) Need sufficient detail and particularity to allow one skilled in the art to reduce to practice without undue experimentation In re Jolley, 308 F.3d 1317, 64 U.S.P.Q.2d 1901 (Fed. Cir. 2002) Page
76 Conception Requirements Not mere hope, but reasonable expectation that the claimed invention will be produced Hitzeman, supra. But don t need a reasonable expectation that the claimed invention will work for its intended purpose Id.; Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 32 U.S.P.Q.2d 1915 (Fed. Cir. 1994) Page
77 Conception Requirements Need a specific utility Single embodiment is enough Page
78 Reduction to Practice Actual Constructive Page
79 Actual Reduction to Practice Produce tangible embodiment of invention Single embodiment enough Demonstrate it works as intended Perfection not required Contemporaneous recognition Page
80 Constructive Reduction to Practice Must be a legally sufficient patent application Involved U.S. application (or patent) Parent U.S. case Foreign priority application Different from relying on parent or priority case to overcome prior art Single adequately described embodiment is enough Nonpatent publication does not qualify Page
81 Determining Priority 1 st party to reduce to practice Unless other party can show Subsequent reduction to practice (actual or constructive), Earliest conception, and Reasonable diligence from before 1 st party s conception to other party s reduction to practice Page
82 Case 1 Party A C No Diligence R Party B C No Diligence R Case 2 Party A Party B Case 3 C Diligence R C No Diligence R Party A C Diligence R Party B C Diligence R Case 4 Party A C No Diligence R Party B C Diligence R Determining Priority Page
83 Case 5 Party A C No Diligence R Party B C No Diligence R Case 6 Party A C Diligence R Party B C No Diligence R Case 7 Party A C No Diligence R Party B C Diligence R Case 8 Party A C Diligence R Party B C Diligence R Determining Priority Page
84 Determining Priority Case 9 Party A C No Diligence R Party B Party C C Diligence R C Diligence R Page
85 Reasonable Diligence Standards of finding are harsh Show virtual continuous (daily) activity during entire relevant time period Evidence must show What acts Specific dates of acts Excused sometimes Page
86 Reasonable Diligence To constitute diligence, activity relied upon must be directed to reducing to practice the subject matter of the count Page
87 Exceptions Reasonable Diligence Work on closely related invention disclosed in involved application or patent Work on closely related patent applications Either a direct attachment to subject matter of Count, or part of an overall scheme... Directed to reducing the invention [of the Count] to practice. Page
88 Engineering Diligence (Actual reduction to practice) Types of Diligence Stringent requirements for virtual continuous activity on invention of count Attorney Diligence (Constructive reduction to practice) Greater latitude to work on other matters (reasonable backlog of work taken up in chronological order and carried out expeditiously) Page
89 Corroboration Basic theory: Guard against incentive to falsely allege earlier dates Evidence independent of inventor One inventor cannot corroborate another Need for conception; reduction to practice; diligence But not needed for all steps or details Only applies to inventor s testimony Page
90 Rule of Reason test Considering all the evidence, is the inventor s story credible? Corroboration Does not alter requirement that evidence of corroboration must not depend solely on the inventor Reese v. Hurst, 661 F.2d 1222, 1226, 211 U.S.P.Q. 936, 940 (C.C.P.A. 1981) Page
91 Rule of Reason test Corroboration Independent corroboration may consist of testimony of a witness, other than the inventor,... Or it may consist of evidence of surrounding facts and circumstances independent of information received from the inventor. Id.: see also Cooper v. Goldfarb, 154 F.3d 1321, 1330, 47 U.S.P.Q. 2d 1896, 1903 (Fed. Cir. 1998) Page
92 Possible Adoption of U.S. Opposition Procedure USPTO 21 st Century Plan Proposal for Post-Grant Review of Patent Claims help assure that those potentially affected by the economic burdens of patents with invalid claims can obtain prompt redress. Page
93 Possible Adoption of U.S. Opposition Procedure Goal of resolution within a year: Direct cases could be presented by documents, and live crossexamination allowed where necessary. Present proposal would eliminate inter partes reexamination entirely and make initiation of third-party requested reexamination discretionary. Page
94 Possible Adoption of U.S. Opposition Procedure Public could petition the USPTO to cancel one or more claims in a patent within one year of its issue date. Also allows anyone who is threatened with a patent infringement suit to petition for review within four months of being threatened. review petitioner may file a petition not later than 4 months after the review petitioner is placed in substantial apprehension of being sued for infringement of the challenged patent claim. To prevent misuse, the review petitioner would be required to make a sufficient initial showing of unpatentability; otherwise the petition would be dismissed. Page
95 Possible Adoption of U.S. Opposition Procedure If the showing is found to be sufficient, a fact-finding proceeding leading to a hearing by the Board of Patent Adjudication (current BPAI) on the merits would follow. Mandatory disclosure of all relevant information, followed by discovery as permitted by the Board of Patent Adjudication, ie, limited Discovery. Patent owner would have a single opportunity as of right to make a narrowing amendment of the challenged claims. Page
96 Possible Adoption of U.S. Opposition Procedure Allow any and all grounds that may be brought in a district court to challenge patent validity, but not to challenge patent enforceability. Allow appeal from final decisions to Federal Circuit only. Page
97 Susan Haberman Griffen Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. 901 New York Ave., N.W. Washington, D.C Telephone: (202) Facsimile: (202) Anna Tsang Fei Han Foreign Legal Affairs Law Firm 12D 167 DunHua N. Road Taipei, 105 Taiwan Telephone: ; Facsimile: Page
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