Fed Circuit Watch: Patent Prosecution 101 – Don’t Mess with Your Priority!

fed circuit watch patent priority

A recent case decided by the Court of Appeals for the Federal Circuit, Natural Alternatives Int’l, Inc. v. Iancu,[1] on October 1, 2018, highlights one of the pitfalls of patent prosecution that is sometimes overlooked or left to non-practitioner patent staff to handle but carries a major risk of losing patent term or patent priority.  …

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Fed Circuit Watch: Dropped Priority Claim Invalidates Patent

112 fed circuit watch patent priority Written Description

On April 19, 2018, the Court of Appeals for the Federal Circuit handed down Droplets, Inc. v. E*Trade Bank,[1] in a case dealing with the formal issue of preparing a proper claim of priority in the specification.  The absence of one will cause major problems downstream, as it did for Droplets, Inc. The facts are …

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Fed Circuit Watch: Written Description From Earlier-Filed PCT with Species Claim Sufficient Support for Later-Filed Genus Claim

102 112 fed circuit watch patent PCT pre-AIA priority Written Description

On March 14, 2018, the Court of Appeals for the Federal Circuit ruled on Hologic, Inc. v. Smith & Nephew, Inc.,[1] which deals with many areas in patents, including foreign applications, priority claims, 35 U.S.C. §103, 35 U.S.C. §112, and pre-AIA treatment for examination.  This case was heard before a panel composing of Judges Newman, …

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