Assuring Quality U.S. Patents: Patent Owners' Perspective Part 3 Of A 3 Part Series
Published date | 30 June 2020 |
Subject Matter | Intellectual Property, Patent |
Law Firm | Finnegan, Henderson, Farabow, Garrett & Dunner, LLP |
Author | Ms Adriana Burgy |
In the third and final part of this series, Assuring Quality U.S. Patents: Patent Owners' Perspective, considerations for quality patent drafting are provided. The first part (interaction between attorney and inventor and preparing a quality patent) of the series can be found here and the second part (satisfying Section 112) of the series can be found here.
PART 3: Quality Patent Drafting
IV. Considerations for Quality Patent Drafting: Answers May Have Inequitable Conduct/Unclean Hands ImplicationsA. Are subjective evaluations presented as fact? Are assertions supported by science?
- Purdue Pharma L.P. v. Endo Pharms., Inc., 438 F.3d 1123 (Fed. Cir. 2006)
B. Do the inventors or persons with a Rule 56 duty know of any prior art, including patents, publications, and possible on-sale or public use information?
- Transweb, LLC v. 3M Innovative Properties Co., 812 F.3d 1295 (Fed. Cir. 2016)
- GS CleanTech Corp. v. Adkins Energy LLC, 951 F.3d 1310 (Fed. Cir. 2020)
C. Do the inventors have any articles or publications on the subject matter of the invention?
- Bristol-Myers Squibb Co. v Rh'ne-Poulenc Rorer, Inc., 326 F.3d 1226 (Fed. Cir 2003)
D. Were all the experiments described performed as described?
- Hoffmann-LaRoche, Inc. v. Promega Corp., 323 F.3d 1354 (Fed. Cir. 2003)
- Novo Nordisk Pharmaceuticals Inc. v. Bio-Technology General Corp., 424 F.3d 1347 (Fed. Cir 2005)
- Pharmacia Corp. v. Par Pharmaceutical, Inc., 417 F.3d 1369 (Fed. Cir. 2005)
- Apotex, Inc. v. UCB, Inc., 763 F.3d 1354 (Fed. Cir. 2014)
E. Are there experiments and/or experiment details that were not included in the specification?
- Aventis Pharma S.A. v. Amphastar Pharmaceuticals, Inc., 525 F.3d 1334 (Fed. Cir. 2008)
F. Are there undisclosed data? undisclosed documents?
- Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359 (Fed. Cir. 2007)
- Apotex, Inc. v. UCB, Inc., 763 F.3d 1354 (Fed. Cir. 2014)
G. Is there information in the files of those having a Rule 56 duty that is inconsistent with those data submitted? Arguments made in support of patentability?
- Monsanto Co. v. Bayer Bioscience N.V., 514 F.3d 1229 (Fed. Cir. 2008)
- Ferring B.V. v. Barr Labs., Inc., 437 F.3d 1181 (Fed. Cir. 2006)
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc)
H. Do they know of any related applications? Office Actions in any related applications? related patents? any litigation on the related patents?
- McKesson Information Solutions Inc. v. Bridge Medical, Inc., 487 F.3d 897...
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