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Prosecution History Disclaimer: Beware of What You Clearly and Unambiguously Say
Patent prosecutors typically are cautious when making arguments that distinguish their client's invention from the prior art. This caution was traditionally based on the concern that later, when the client enforced its patent rights against a potential infringer, these arguments may provide the basis for restricting the range of equivalents available to the patentee under the doctrine of prosecution history estoppel. Prosecution history estoppel normally limits the range of equivalent elements that are available to satisfy a claim element under a doctrine of equivalents analysis (ie, when there is no literal infringement of that claim element). Recent decisions by the Federal Circuit not only reaffirm the significance of statements made during prosecution; they also extend their impact to a literal infringement analysis. A patentee who during prosecution “clearly and unequivocally” disavows the prior art (or even defines the invention) may affect the literal scope of the claims. This doctrine is now regularly referred to as prosecution history disclaimer.
Under this doctrine, a claim term may receive a “gloss” that limits the claim to a particular feature that is not expressly stated in the claim, and the result can play out at the level of a literal infringement analysis. Thus, an accused infringer should closely examine prosecution history statements, not only as a source of arguments to limit the patentee's range of equivalents, but also as a source of potentially determinative evidence for a favorable claim construction to avoid literal infringement. Similarly, patent prosecutors should carefully phrase the arguments made during prosecution so as to avoid unnecessarily emphasizing arguments or distinctions in order to obtain allowance of claims, thereby limiting the opportunity of a future alleged infringer to successfully invoke the doctrine of prosecution history disclaimer.
The Federal Circuit's Early History of 'Disclaimer'
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.