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Terminally Disclaimed
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Okey dokey, then. Fantasy land.
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Patent theft? It's still available for novelty in the EPO, just not obviousness. Presumably, stealing another's invention would be a novelty problem...I don't get your comment.
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All this hand wringing about FTF. Any company that files globally has effectively had to operate with a FTF mindset anyway. One thing I wish the bill would have done is harmonize the US with the ex-US ideas regarding unpublished prior art (e.g., in Europe, it's novelty only prior art). It's never made logical sense to me that an inventor is aware of all prior art pertinent to his/her problem or field of endeavor, when it's unpublished. But no. We'll continue to be different there as well.
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"curious as to the difference in "Quality" between sophisticated and unsophisticated drafting, in the three broad fields of 1) Chem/Bio 2) EE and 3) MechE. Just to be provocative, I am going to suggest that only in sector 3) can one readily see the difference between sophisticated and unsophisticated drafting...how many different ways are there, to claim Molecule X?" If you really think this, you obviously haven't read the pile of badly drafted generic chemical claims out there. Not only are many of them completely overbroad and likely invalid for a multitude of reasons, but a certain number of them are either indefinite or just flat-out wrong. Or they are drafted with one completely ridiculously broad claim and some species claims with nothing in between. Granted, you are going to be enforcing the species claim in many cases, but it doesn't do much for the value of your portfolio for licensing purposes. But hey, you saved a buck. Yay, you.
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If the USPTO is going to summarize case law, can they at least summarize it accurately? From the snippet above: Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989 (Fed. Cir. 2009). It is not necessary to select a single compound as a ''lead compound'' in order to support an obviousness rejection. What the case actually says: An obviousness argument based on structural similarity between claimed and prior art compounds “clearly depends on a preliminary finding that one of ordinary skill in the art would have selected [the prior art compound] as a lead compound.” Takeda, 492 F.3d at 1359; see also Eisai Co. Ltd. v. Dr. Reddy's Labs., Ltd., 533 F.3d 1353, 1359 [87 USPQ2d 1452] (Fed. Cir. 2008) (stating that “post-KSR, a prima facie case of obviousness for a chemical compound still, in general, begins with the reasoned identification of a lead compound” in the prior art). Teva argues that the '406 patent identifies 2-pyr EHDP as the most promising molecule for the inhibition of bone resorption. The trial court disagreed and concluded from the evidence that a person of ordinary skill in the art would not have identified 2-pyr EHDP as a lead compound for the treatment of osteoporosis. We need not reach this question because we conclude that even if 2-pyr EHDP was a lead compound, the evidence does not establish that it would have been obvious to a person of ordinary skill at the time of the invention to modify 2-pyr EHDP to create risedronate. Deciding a case on other grounds is not the same as saying that a lead compound analysis is "not necessary".
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...It seems that there is not much incentive for most of the junior to mid-level drones grinding out patent applications at most law firms to do a great job..... Snort. How many partners draft patent applications at their rate? FYI, the motivation comes from the prosecution world being a small world indeed. I think I learn more from prosecuting applications I am thankful I didn't write. Better to learn all the sorts of things not to do.
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As someone who regularly prosecutes corresponding applications in 30+ countries, it is quite common to submit allowed claims to foreign offices, particularly the EP claims. I tend to submit the US claims less often because the claims are not optimal due to restriction practice in the US and the EP allowance tends to be more persuasive where the IPRP was compiled by an EP examiner. However, the persuasiveness of the allowed claims is very much jurisdiction dependent. Your first office action in Mexico, for example, will likely be a request that the applicant conform the claims to an issued patent in the EP or the US. Other countries allow you to bypass local examination and, instead, request grant based on an issued patent or allowance in a major jurisdiction (e.g., in Singapore, it's far preferable as it's a crap shoot what office they will use to examine the claims for "local" examination). Others may consider it persuasive with respect to novelty or inventive step particularly if the allowance was from the EP and the EP did the search at the international stage. But they will give zero weight to the EP or US claims where they have a high bar with respect to clarity or written descrption. Good luck with your EP or US claims in Eurasia, Taiwan or China for example.
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For chemical case with a broad genus claim, a 1.131 affidavit may be hard where the reference(s) disclose many species or a subgeneric claim.
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