Tag Archives: First to File

Steve Hall to present at the Defense Research Institute’s Intellectual Property Seminar

Steve Hall, member of Wyatt’s Intellectual Property Protection & Litigation Service Team, will be speaking at the Defense Research Institute‘s (DRI) Intellectual Property Seminar on the topic “Using the AIA’s First to File Rule and the Written Description Requirement to Invalidate Patents” on May 6, 2016 in Nashville. Mr. Hall’s presentation will teach attendees how to use the “written description” requirement, along with recent amendments to the Patent Act, to challenge a patent’s validity in a way that was not available to defendants before 2013, when the First-to-Invent features of the America Invents Act went into effect.

Event details to follow.

The Written Description Requirement: Genus/Species Claims (Part Three of Three)

By Stephen C. Hall

This is the third and final post of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

“Genus”: a class, kind, or group marked by a common characteristic(s)
“Species”: a logical subdivision of a genus marked by a specific attribute

gear to successTaxonomy (classifying things according to genus and species) also has a parallel in patent law. A patentee may use narrow species claims to distinguish against prior art, while at the same time seeking the broadest possible “right to exclude” with a genus claim(s). But there are trade-offs. First, the Patent Office can reject a broad genus claim if only one member of the genus was known in the art. Second, the patentee must provide a level of description proportional to the scope of the claim. In litigation, defendants accused of Continue reading

The Written Description Requirement: When Narrow Teachings Meet Too Much Specificity (Part Two of Three)

By Stephen C. Hall

This is part two of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

The previous post in this series introduced the potential litigation hurdle – or, opportunity, depending on one’s perspective – involving the requirement that a “parent” patent application must satisfy the written description requirement with respect to claims of a later-filed “child” application.  While this requirement is well established under U.S. patent law, the interaction between the written description requirement and the AIA is a new wrinkle.iStock_000019576650Large

An AIA “transitional application” is one filed after March 16, 2013, which claims the effective filing date of an application filed on or before March 16, 2013.  If such a priority claim is justifiable, then Continue reading

The Written Description Requirement: New Wrinkles on a Familiar Story (Part One of Three)

By Stephen C. Hall

This is part one of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

InventionsIt happens regularly in patent litigation: a patentee asserts a patent that arose from a child application, the child application claims priority to an application filed years before, and the development of prior art in the intervening years affects the outcome of the litigation. In various cases, the outcomes (along with millions of dollars in damages) have hinged on the teachings of a parent application.

One such case involved the alleged infringement of Continue reading