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Including Claims in Provisional Patent Applications? November 14, 2005

Posted by mais in USA.
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Curtsy-Patently-O: Patent Law Blog:  discusses “Including Claims in Provisional Patent Applications?”

An ongoing debate amongst some patent attorneys is whether to include claims in provisional applications. According to the rules of practice, claims are not required in the provisional application. (MPEP 601). However, there are a few good reasons for including claims in the application.

In the wake of Phillips v. AWH, it has become even more important to ensure that a patent?s specification accurately describes the meaning of the associated claim terms. This task is all but impossible in the absence of any claim terms to describe. Thus, it is important to draft at least a few model claims with the provisional application. Some practitioners, such as Russ Krajec, have advocated drafting the claims but then deleting them from the application before filing. Russ argues that claims in the provisional can only hurt the applicant.

I disagree. The claims can be helpful in ensuring adequate disclosure and enablement ? this is especially true in cases where the provisional is rushed through on a very short deadline and/or low budget. The claims, as part of the specification, can easily tie together loose ends that may have been created in the rush. As Todd Mayover aptly points-out, including claims in the provisional creates a clear record associating those claims with the earliest filing date or priority date. It is also unlikely that patent attorneys would seriously stick to the practice of initially drafting claims that will eventually be deleted ? this is especially true in the fast-paced area of provisional applications. One newfound fear is that including claims in the provisional leaves the patentee open to Festo-type prosecution history estoppel. However, we have no evidence that presenting new claims in a subsequent nonprovisional would create any such estoppel ? especially since the nonprovisional is newly-filed rather than simply an amended version.

An astute Patently-O reader provided the following comment:

I include at least one extremely broad, never likely obtainable claim in a provisional. First under US law, it is true that a provisional need not include one in order to be considered valid. But foreign courts can say otherwise and render the US provisional (if serving as a priority document) invalid in a foreign court. Not including a provisional claim is only useful if you are absolutely certain that you won’t go foreign.

I hear the arguments related to the effect of narrowing by amendment as creating PHE. In the post-Festo world, you can at least explain the amendment so as to overcome the presumption of PHE. Let’s face it, if you are relying on the DOE to win your case anyway and the case rests on whether you started broad and narrowed by amendment, you are fighting a likely unwinnable battle. In the last 10 years or so, how many DOE cases has the Fed. Circuit actually upheld? Not too many.

No U.S. practitioner has been able to cite a case, rule, regulation, expanded Board of Appeals decision, etc. from a foreign court that has categorically said, “A U.S. provisional application serving as a priority document [to this foreign application] that does not include at least one claim is nonetheless considered a permissible priority document.” Why take the chance of not including a claim in a provisional if there is a likelihood that the foreign counterpart could get knocked out.

Another reason to the include at least a broad claim is that most foreign laws have strict adherence to the rule that the broadest initially presented claim will set the claim scope for the application. So if you present a very broad claim initially, you can amend narrower. But if you present a narrower claim first then realize that you can go broader, you cannot amend to go broader. It is for this reason you can include a “claim” that says something like, “I claim, the product comprising any feature described, either individually or in combination with any feature, in any configuration.” or a “process to […] comprising any process described, in any order, using any modality, …”


How to Write a Patent Application-Deconstruction and Rebuilding Approach November 14, 2005

Posted by mais in Patent.
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Anything Under the Sun Made By Man: How to Write a Patent Application ? Deconstruction and Rebuilding Approach: “How to Write a Patent Application ? Deconstruction and Rebuilding Approach

Curtsey –Anything Under the Sun Made By Man: ?
There are several different styles of patent applications, each being a certain response to a specific business situation and prosecution strategy.

I use a deconstruction and rebuilding approach, detailed below, for applications where the prior art is reasonably well known, a product is reasonably well known or anticipated, and thus the claims can be well tailored.

For example, if the inventor knows the art very well and has worked at or near the top of the field for a period of time, I have reasonable confidence that they can distinguish their invention and the prior art. Also, if I have a reliable search done using a draft set of claims, we may be confident enough in the prior art to know what would reasonably be allowed by the Patent Office.

The method for drafting the patent application is quite simple: deconstruct the invention down to the claims, then rebuild the description to match the claims. This method results in an application that is very tight and fully supports each element of the claims very well, but it might not have much fat or excess that could be used as backup claims if the original claim set must be significantly altered. These applicati”

US again threatns to suspend patent rights on health hazard grounds.. November 11, 2005

Posted by mais in Drugs, TRIPS, USA.
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Apprehension about offering the stringent Product Patent protection to Pharma inventions during the TRIPs negotiations are turning the to be true.

Even in developed world, companies holding the key patented medicine were reluctant to offer the medicines to the needy people at the time of community health crises and in order to avoid any catastrophy might govts like US has literally threat to them suspend/ revoke their patent rights over the life saving medicine.

Perhaps, most of developing countries are not strong enough to compel any such patent holder to make available the life saving drugs to the public on reasonable prices.

We have to ensure that natural human lives are always placed above the profit making motives of legal entities.

IPBiz: Washington Post on Tamiflu: U.S. bullies IP owners: “Monday, November 07, 2005
Washington Post on Tamiflu: U.S. bullies IP owners
But the U.S. isn’t a model of respect for intellectual property, either. Panicked by its own lateness, the Bush administration has bullied Roche into opening a new production operation in the United States; if Roche had refused, the administration was ready to break the patent. Sen. Chuck Schumer has gone further, denouncing Roche for elevating profits above health and demanding that the firm license its technology to other drugmakers or face legislation compelling it to do so. Coming on top of similar bullying four years ago of Bayer, the maker of an anti-anthrax drug, this browbeating sends a clear signal: If you make a drug that turns out to be really important, don’t expect patent laws to protect you.