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Unwired and Huawei’s Excellent Adventure: Birss J boards his Time Machine to look at prior art disclosures on the Internet
In a recent decision in Unwired Planet v Huawei, Birss J considered when a potential prior art document, which had been disclosed online, had been made available to the public. In the case in question the facts were such that the document had been published just a matter of hours before the priority document was filed. It was not in dispute that the document amounted to an enabling disclosure of the invention. (more…)
US caselaw – countering an obvious combination objection
We’ve all been there. The Office Action for your client’s latest US patent application contains an inventive step objection based on the combination of two documents. The documents together appear to be relevant to your main claim but the client swears blind that the documents would never be combined to arrive at the invention. What do you do? How can you argue against such a combination of prior art. Well, here is a brief compilation of relevant US cases bearing on the obviousness of combinations*. (more…)
Prior art in strange places: The Beano, Donald Duck and 2001 as prior art
A conversation seen on Twitter the other week got me thinking about prior art originating from strange places. We’re all used to receiving patent literature or conference papers as prior art. Sometimes if you’ve “pitched the invention wrong” you might even receive a Wikipedia page as prior art but what’s the oddest prior art you’ve seen in a patent or other IP related case?
How about 2001: A Space Odyssey? Or The Beano? Or a Donald Duck comic? Believe it or not, these are actual sources of prior art as we’ll see below. (more…)
The Unitary Patent and Post-grant Amendment
At a CIPA webinar on the Unitary Patent on 15 March 2013, a comment from a member of the panel took us rather by surprise: a suggestion was made that there is no provision in the UPC Agreement for post-grant amendment.
This IPCopy writer promptly dove for her well-worn copies of the Regulation and the Agreement, streams of obscure patent doomsday situations running through her head, and words of disbelief cascading in the direction of her unfortunate office-mates (such are the hazards of an open plan)*. Could this be true?
Well, yes and no, it seems… (more…)
America Invents Act (AIA) – IP Summit Brussels
As noted in an earlier post, the unitary patent and unified patent court in Europe was a hot topic of conversation at the IP Summit in Brussels recently. However, the unitary patent package was not the only major law change discussed and on 7 December 2012 I attended an informative session on “Filing Scenarios Before and After March 16, 2013” in relation to the America Invents Act (AIA).
This session was chaired by Eric Raciti from Finnegan with Malcolm T Meeks (Infineon Technologies AG) and Prof. Herb Munsterman (IIT Chicago-Kent College of Law) on the panel. The session focused on changes to the scope of prior art under AIA and also covered changes to the US grace period and new post-grant procedures that will be available to challenge granted US patents.