LJN Newsletters

Is a "product by process" claim infringed by products that are made by other processes? After 17 years of waiting, the Federal Circuit emphatically answered the question: No; product-by-process claims are only infringed by products made using the claimed process. Although the law now appears to be clear, the strongly worded dissent questions the soundness of the ruling and warns of potentially far-reaching implications for the pharmaceutical and biotech industries.

Addressing the issue of whether a comprehensive reference listing of every relevant antisense oligodeoxynucleotide in a known nucleic acid sequence anticipates claims to specific antisense sequences, the U.S. Court of Appeals for the Federal Circuit held that anticipation merely requires that the oligonucleotide sequence was in the prior art, not that its usefulness was previously disclosed.

When choosing which claims to assert against an infringer, the traditional thought is "more is better." That is, many choose to assert any and every claim that passes the Rule 11 test. While this strategy is understandable and often the best course of action, it might not yield the best damages result.

Because a finding of patent infringement no longer automatically results in an injunction, courts have been struggling to determine the proper calculus for calculating post-verdict damages — or "ongoing royalty rates" — when the court declines to issue an injunction.

The new European Patent Office rules, which will be effective on April 1, 2010, will drastically restrict how a patent applicant is able to file divisional patent applications and will increase the patent applicant's obligations to provide information to the EPO during patent examination.

Recent rulings of interest to you and your practice.

Who does what; who goes where.

All the latest information you need to know.