Law.com Subscribers SAVE 30%
Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.
Thorough Prior Art Searching and Careful Claim Drafting after Festo and Johnson & Johnston
In 1963 the Supreme Court noted that patent applications “constitute one of the most difficult legal instruments to draw with accuracy.” (See Sperry v. Florida Ex. Rel. Florida Bar, 373 U.S. 379, 383 (1963)). Recent decisions by both the Supreme Court and the Federal Circuit have made this task even more difficult. In particular, the Supreme Court's 2002 decision in Festo v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (535 U.S. 722) and the Federal Circuit's 2003 Festo remand decision, as well as the Federal Circuit's 2002 Johnson & Johnston (285 F. 3d 1046) (344 F. 3d 1359) decisions, all had significant narrowing effects on the doctrine of equivalents.
Festo
Prior to the Federal Circuit's 2000 en banc Festo decision (234 F. 3d 558), and the subsequent Festo decisions listed above, patent drafters had much less of an incentive to perform a thorough search of prior art than they do now. Prior art searching is both expensive and time consuming and inventors often claim that it is unnecessary because they are familiar with the relevant art. Additionally, searching prior art may give the inventor or drafter actual notice of third-party patents, thereby increasing the risk of willful infringement damages. Practitioners who did not conduct extensive prior art searches were comforted by the fact that, if art was discovered during prosecution, claims could always be amended with little effect. As a result, applications would often start with broad claims that would be narrowed in a process of negotiation between the patent practitioner and the examiner. The effectiveness of this strategy changed with the Festo line of cases, in which the Supreme Court ultimately held that narrowing amendments relating to patentability are presumed to result in a prosecution history estoppel that prevents the application of the doctrine of equivalents to the surrendered element. The Court provided three exceptions to this estoppel: 1) when an equivalent is “unforeseeable” at the time of the application; 2) where the rationale underlying the amendment bears no more than a “tangential relation” to the equivalent in question; and 3) “some other reason” that the patentee could not reasonably be expected to have described the equivalent in question.
Major Differences In UK, U.S. Copyright Laws
This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.
The Article 8 Opt In
The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.
Strategy vs. Tactics: Two Sides of a Difficult Coin
With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.
Legal Possession: What Does It Mean?
Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.
The Stranger to the Deed Rule
In 1987, a unanimous Court of Appeals reaffirmed the vitality of the "stranger to the deed" rule, which holds that if a grantor executes a deed to a grantee purporting to create an easement in a third party, the easement is invalid. Daniello v. Wagner, decided by the Second Department on November 29th, makes it clear that not all grantors (or their lawyers) have received the Court of Appeals' message, suggesting that the rule needs re-examination.