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Dilworth IP will host a half-day symposium on intellectual property law at the Northeast Regional Meeting (NERM) of the American Chemical Society at the Omni Hotel in New Haven, CT on October 23, 2013. Intellectual Property Fundamentals: What Everyone in R&D Must Know will feature short presentations designed to give scientists, engineers, business managers, and other R&D professionals practical knowledge on key aspects of IP law.

Most patents are a would-be private investigator’s dream. Earlier, we learned that having the right approach to reading patents matters. To get the most out of your technical reading, pay attention to the “why.” So how is a patent like a mystery novel? For discriminating readers, patents provide a bonanza of clues, but it takes effort, and knowing where to look, to unearth the golden nuggets from what’s often a mountain of spectacularly obtuse text.

Why is it important to write a good invention disclosure? Ultimately, an invention disclosure will have many audiences, and “garbage in, garbage out” applies. By crystallizing data and results into a simple document, a scientist or engineer can convince management that it will be worth the effort and cost to file a patent application. However, a poorly crafted disclosure will confuse everyone, including the attorney or agent assigned to draft a patent application. The resulting application may be poor also, which will alienate a patent examiner. If you’re fortunate, the application will be allowed anyway. However, your competitors will identify any weaknesses in the granted patent—including the quality of your scientific showings—in the event the patent is subject to post-grant review, inter partes review, reexamination, or litigation.

When Justice Kagan wrote for a unanimous U.S. Supreme Court in Bowman v. Monsanto Company (decided May 13, 2013), she may have had Shakespeare’s Polonius in mind. After all, the opinion is a mere ten pages. However, the opinion is even more remarkable for its simple language and calm rhetoric. Given the lopsided decision, the Court could have hammered the petitioner with extensive case citations, legal jargon, and a nasty tone. Instead, it delivered the bad news to Bowman gently.

Obviousness is one of patent law’s basic requirements. Section 103 of 35 U.S.C. provides that even if an invention is novel (as defined in Section 102), a patent may not be obtained if the “differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date to a person having ordinary skill in the art to which the invention pertains.”

Dilworth IP partner Jonathan L. Schuchardt is delighted to be a speaker at the 48th Annual Corporate Patent Seminar, which will take place in downtown Chicago from April 17-19. Jon’s talk is entitled: “American Institute of Physics and John Wiley & Sons versus Schwegman, Lundberg & Woessner: Copyright Infringement or Fair Use?” In three ongoing lawsuits, district courts will decide the extent to which a law firm, while filing and prosecuting patent applications for its client, may make unlicensed copies of copyrighted journal articles. We anticipate a lively discussion! […]

Milton’s insight into the clarity of hindsight rings true centuries later. The solution to even a thorny problem seems easy once the solution is revealed. Patent examiners have the difficult task of seeing the solution to a problem in the form of an inventor’s patent disclosure, and then needing to pretend they did not see it. The examiner must accelerate Doc Brown’s DeLorean to 88 mph and travel back to a time just before the applicant’s initial filing to evaluate whether the now-claimed invention would have been obvious to a person of ordinary skill. The examiner may not use insights gleaned from the inventor’s disclosure to form an opinion.

Most scientists and engineers I know would rather suffer a root canal procedure than try to decipher a handful of patents. I’m here to convince you that patent reading need not require Tylenol® with codeine. It’s a matter of having the right approach. In particular, how you read a patent should depend on why you’re reading.

New inventors, and sometimes seasoned ones, are often surprised (or horrified) to learn that getting a patent does not give them the ability to practice their own invention. After all, they’ve probably waited two or three years, endured two or more rejections from the Patent Office, and at last have their prize: a granted patent. “What do you mean we can’t practice it?” This is probably the most common of all misconceptions about patents.

On March 16, 2013, the United States will become a “first inventor to file” patent system instead of a “first to invent” system. Until now, the U.S. awarded a patent to whoever could demonstrate the earliest completion of an invention rather than whoever won the race to file a patent application. When two inventors claimed the same invention, the Patent Office could use an “interference” proceeding to resolve who actually invented first and was therefore entitled to the patent. With the new law, interferences will eventually go away. The only issue, aside from who filed first, is whether the first filer actually derived the invention from another and is therefore not a true inventor, a rare occurrence.