1 / 8

Scope: Enemy of Term? Envisioning the Future Scope of Claims: Impact of Recent Decisions

Scope: Enemy of Term? Envisioning the Future Scope of Claims: Impact of Recent Decisions. Vicki G. Norton San Diego AIPLA Spring 2009 The views expressed herein are my own and do not reflect the views of other speakers on the panel, clients or of Duane Morris.

oni
Download Presentation

Scope: Enemy of Term? Envisioning the Future Scope of Claims: Impact of Recent Decisions

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Scope: Enemy of Term?Envisioning the Future Scope of Claims: Impact of Recent Decisions Vicki G. Norton San Diego AIPLA Spring 2009 The views expressed herein are my own and do not reflect the views of other speakers on the panel, clients or of Duane Morris

  2. The Patent Squeeze 102 In re Gleave In re Chuang 112 Ariad v. Eli Lilly ICU Medical 103 KSR In re Kubin

  3. SCOPE: ENEMY OF TERMHELD NOT PATENTABLE (35 U.S.C. § 102) In re Gleave

  4. SCOPE: ENEMY OF TERMHELD NOT PATENTABLE (35 U.S.C. § 102) In re Chuang (Bd.) 4

  5. SCOPE: ENEMY OF TERM HELD NOT PATENTABLE (35 U.S.C. § 103) In re Kubin 5

  6. SCOPE: ENEMY OF TERM: 35 U.S.C. § 112 Ariad v Eli Lilly 6

  7. SCOPE: ENEMY OF TERM: 35 U.S.C. § 112 ICU Medical v. Alaris 7

  8. SCOPE: ENEMY OF TERMAVOID LATE-DISCOVERED ART • Do search & diligence early to avoid supplemental filings or RCE that decrease PTA • E.g., Inventor publications; rejections in related cases • Meeting notes from inventors & employee co-workers of inventor? (Monsanto v Bayer) • Details of testing to distinguish prior art (Aventis v Amphastar) • Filing RCE eliminates Type B (Post 3-year) PTA

More Related