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BioPatAtty
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I imagine that the Biotech industry, and most other industries, would disagree. And why would you lament that you cannot use techniques that other people have patented? How can you say that they haven't originated them? Unless you are arguing that they didn't originate them "first". Are you saying that they derived the invention from someone else? There can be independent invention by others. If you had "personally created prior art five years or more before the patent was first registered" (filed?), why didn't you file for a patent? If you chose not to, why didn't you at least publish it somewhere? If you had done either of those things, you would have been able to sell your work in the US. At some level, this might be the result of a lack of knowledge about how the system works. But the quid pro quo is based on disclosure. If you don't disclose, you will not be heard to complain when your concealment works to someone else's advantage. And it might be true that some patents stifle some innovation, but they do so for only a (relatively) short period of time. Perhaps if the subject matter is something that hundreds would soon also "invent", then it is not the type of thing that should be patented. But arguing that "each patent that is issued is a drag on innovation and holds the whole economy back" smacks of hyperbole.
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"the patents system would be greatly improved if there were a strict limit - say ten - to the number of patents which could be issued world-wide in any one year" How would this greatly improve the patent system? If you believe that patents spur innovation (overall, not individually), then this statement doesn't make any sense. The so-called "top 10" would get their reward from the market. But that doesn't mean that #11 should get nothing since it's quite likely that #11 brings a benefit to society as well. Unless of course you believe that #11 would have disclosed anyway, in which case I'd probably have to disagree with you.
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anon: I completely agree. The fact pattern suggests a huge enablement problem since under the facts, the public doesn't know which ones work and would be left searching for a needle in a haystack. Even under the (arguably) permissive standard about it being OK to have "some" non-working embodiments within the scope of the claim so long as they do not become "too numerous", when 99.97% of the embodiments don't work, there's an enablement problem. My only point was that "extremely laborious and difficult" and "extensive" do not compel the conclusion of non-enablement. It is certainly a factor to be considered, but that's it. If the "extremely laborious and difficult" and "extensive" experimentation is in fact exactly what would have been expected, and "difficult" is nonetheless "routine", then there shouldn't be an issue. But again, not under these facts.
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Completely agree. 3 out of 10,000 is a big problem, even under the "it's OK to have some non-working embodiments within the scope of the claim so long as they don't become too numerous", standard. My only point was that "extremely laborious and difficult" does not necessarily compel a conclusion of non-enablement. The other facts presented certainly appear to, however, particularly since under the facts the public doesn't know which ones work and would soon find that they were searching for the needle in the haystack.
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"Extensive" does not necessarily = "undue". "The test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed." See In re Wands.
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I did mean the kind regards. It's not likely I'd get too worked up about anything on here. But if you really think you've won something, whatever. Basically, the former Exr indicated that the PO treats the element recited in a whereby clause as optional, which means it might occur or it might not. Doesn't matter either way. Seems unlikely that any claims drafter is going to put optional elements in a whereby clause, but the PO (this time induced by the CAFC) seems to think that "whereby" and "optionally wherein" are synonyms. Again, whatever. You then stated, "I have no problem understanding that the use of the word 'optional' here as signifying that the clause that starts with 'whereby' is not necessary to the claim because the effect does not optionally occur - the effect is already captured by the other existing claim terms, making the entire 'whereby' clause unneccesary for legal effect." If you understand "whereby clauses are considered to show 'optional' material" to be equivalent to "the effect does not optionally occur", then you are saying "optional" and "required" are synonyms. Alternatively, you are saying that "optional" and "unnecessary" are synonyms. If you are saying either of these things, then we will have to agree to disagree.
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If you say so. Best of luck to you.
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Basic English comprehension still seems to avoid you like the plague, doesn't it Pete?
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Yes Prior. We've been though that. Asked and answered. The MPEP says that they are considered optional, and the reg is based on a CAFC case. Thus, we all have to move forward accordingly. But we are not arguing practical prosecution here. The CAFC occasionally (being charitable) and the PTO frequently (also, unfortunately, being charitable) comes up with this type of stupidity. So we all adapt. I'll use wherein and whereby clauses, and you (or your current brethren) will ignore them. That's the state of the law today. But who knows what it'll be in the 3-5 years when the apps actually get picked up for examination?
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if you say so, Pete. Continue to look at claims that have whereby clauses as just a series of steps with an outcome that doesn't matter. So long as you get your desired rejection, there's nothing wrong with the world. No need to examine a claim in its entirety. I guess that requirement must have been written as a whereby clause.
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If you interpret the term "optional" as such, you are the poster child for the farce that is BRI. Congrats.
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Thanks for the cite. But "intended result" does not equate to "optional". If it is practice to give it no weight, then there's another bit of stupidity to thank the CAFC for. Strangely, if the whereby clause had been affirmatively recited as a step (in Minton, "efficiently trading..." as a method step), we'd not be having this discussion. And everyone knows that is what was being claimed in Minton. But apparently, everyone can ignore that, I guess.
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If by "explicitly sanctions broader construction in examination than in litigation" you mean constructing something so ridiculously broadly that art that no one who ever spent more than 3 seconds in the relevant field would consider even remotely applicable, then I agree with you.
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"Whereby" is optional? Seriously? If my claim is essentially, Do step A, step B, step C, whereby effect 1 occurs" means that effect 1 only optionally occurs? Is there any basic English comprehension going on over there at all? No wonder BRI is a flipping mess. And I get grief about using "optionally wherein..."?
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Seems like a reasonable strategy, although in some (maybe rare) cases, reasonable minds can disagree about what constitutes "enforceable, reasonable, and honestly valid" vs. "absurdly broad and likely invalid". Somewhere between those two extremes might be where your infringers hang out, and you want to give them as little space as possible. And I certainly agree that it shouldn't have to be adversarial. Let's get rid of Rule 56 (or at least the folly that it's been morphed into) and PHE, and maybe we can all just get along again.
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I understand, and I wasn't trying to suggest to you something of which you were not already aware. I didn't mean for it to come off that way. What I meant is that while those are no doubt extremely annoying as a complete waste of time (and client money), at least there is a quick fix. When one gets an obstinate Exr who acts like he or she is being asked to give up a first born, there are few ways of dealing with it, none of them particularly good. And it happens all the time. You eventually have to appeal, and if you win, do you get the client's money back? Not all of us are trying to gouge fees out of our clients. But I get your point. I do not know why some folks on this side don't just cut to the chase (well, for some I do, but that is their issue). If, like some jurisdictions, there were no such thing as PHE and both sides REALLY wanted to get something done, perhaps the idea of a negotiation would come back. There's either something there or not, and while reasonable minds can disagree, they can also agree in a lot of cases. As a side note, the first line of my comment was pathetically immature, for which I apologize. I should never post on a Monday morning before the caffeine kicks in. Lesson learned (I hope).
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Yes. Well said. Although one wonders if examiner12 has been on the job for about 1 month in that no one with longer experience would ask whether everyone was aware of the concept of fraud on the Patent Office. My state-the-obvious corollary would be, "You do know that 'A person shall be entitled to a patent unless'...", right? Want to shut down the "it is not known to store data in a memory..." argument? Cite some art. It's pretty simple. Until you do, the ball's still in your court.
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"Patent prosecution shouldn't be adversarial like litigation". Nothing like starting off a Monday with a good laugh. Thanks for that!
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That is certainly a possible approach. I hear the phrase "not persuasive" in the future, however. Perhaps they are looking for a stronger position and/or some backing authority. But implying that there had to be a nefarious purpose to taking an extension on this one seems like a huge stretch.
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Wow. An Examiner sends you a blatantly improper request and because you don't immediately bend over and provide the information you have something to hide? Great logic there. I guess that if one has nothing to hide you should always capitulate to such things. Remind me never to hire you as my lawyer.
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Why would Kappos' group have special insight here? It's a contract issue wrapped up in a statutory construction issue. Justice is as good as any for this (take that as you will, however).
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So just to be clear. Compositions and methods are always restricted vis-a-vis each other because they are patentably distinct, and yet we continue to find OTDP when compositions and methods are presented in separate applications. Of course, it is best to force a Restriction Requirement to avoid the whole issue, but that is merely form over function. If methods and compositions being patentably distinct from each other is basically black letter law at the PTO, the same should be true when OTDP is considered (although I am not the least bit surprised that it is not).
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"All that praise given to Kman should be accompanied by a statement that he obviously hasn't been here long enough to recognize the largest enemy of his plans: hordes of barbarian dependent claims." Yeah. Dependent claims are the culprits. Must be because they are so hard to examine after an independent claim has been found to be allowable. Makes perfect (Patent Office) sense to me.
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Isn't the whole point of patents that once you invent something you get to be the only person who uses that invention? Posted by: IANAE | May 27, 2010 at 03:30 PM I cannot even begin to describe how completely WRONG this statement is. Unfortunately, this is a recurring theme in the lay press about patents. I would have liked to have believed that someone who allegedly works in the field would have known the difference. Perhaps I expected too much.
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So I guess what you are saying, Malcolm, is that since this guy is obviously guilty he deserves no forum for challenging his guilt. If that's your position, I hope I Love MM was right and you're not an attorney.
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