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.
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: When Narrow Teachings Meet Too Much Specificity (Part Two 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).
It 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 The Written Description Requirement: New Wrinkles on a Familiar Story (Part One of Three)
By: William S. Parks*
Another chapter in the continuing saga of business method patents was recently added with the Supreme Court’s Alice v. CLS Bank decision. Prior decisions had given credence to the concept that adding a computer or some other type of transformative quality to a method of ostensibly handling a business-like process was sufficient for patenting purposes (or, at least to move past the threshold question of whether the claimed method met the basic patentability criteria of 35 §101). In addition, certain court opinions had appeared to establish a definition of an “abstract idea” in the patent realm. Since long-held and followed principles have refused patent protection to methods based strictly on abstract considerations, the coupling of a computer-transformative action appeared to provide a basis for inventors to move forward in this area. With Alice, however, the Supreme Court has apparently done away with this well-understood patenting basis.
The Alice decision concerned an infringement claim on several business method patents that claimed schemes for mitigating settlement risks within financial exchange agreements. Basically, the overall method concerned the Continue reading High court invalidates some business methods, leaving some uncertainty