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Category: Priority


Patenting Ideas Previously Disclosed in an Earlier-Filed Provisional Application but Later-Filed Non-Provisional Application
September 10, 2015
Post by Blog Staff
Paul S. Mazzola Can an idea that has already been conceived (and published) still be patented? The scenario appears possible based on a recent holding from the United States Court of Appeals for the Federal Circuit. Many know that nearly all publicly available information with a publication date prior to the filing date of a patent application can constitute a prior .......
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Who owns the Trademark: Distributor v. Manufacturer
August 11, 2015
Post by Blog Staff
The Trademark Trial and Appeal Board (TTAB) has previously held that in the absence of an agreement between a manufacturer and a distributor, there is a legal presumption that the manufacturer is the owner of the trademark. The presumption that the manufacturer is the owner of a disputed mark may be rebutted. In determining which party has superior rights, the TTAB has looked to severa.......
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Means-Plus-Function Claims and Written Description for Priority
February 10, 2014
Post by Blog Staff
InEnOcean GMBH v. Face International Corp., the Federal Circuit vacated and remanded a final order of the U.S. Patent and Trademark Office (“PTO”) and the Board of Patent Appeals and Interferences (“Board”) with respect to EnOcean’s U.S. Patent Application No. 10/304,121. The Federal Circuit held (1) the term “receiver” was recited with sufficient structure as to not inv.......
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Patent Invalidity Based on Non-Compliant Claims of Priority
February 03, 2014
Post by Blog Staff
InMedtronic Corevalve, LLC v. Edwards Lifesciences Corp., the Federal Circuit affirmed summary judgment of invalidity of the asserted claims of U.S. Patent No. 7,892,281 ("the '281 patent") based on the patent's claimed priority date. Medtronic sued Edwards for infringement of claims 3, 4, 7, 12, 14, and 15 of the '281 patent. The U.S. District Court of the Central District of California gr.......
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New and Useful - April 10, 2013
April 10, 2013
Post by Blog Staff
· InIn re Hubbell the Federal Circuit confirmed the rejection of all of the pending claims in an application, filed with Jeffrey Hubbell, Jason Schense, Andreas Zisch, and Heike Hall as named inventors. The invention disclosed in the application was based on research performed while all of the named inventors were at California Institute of Technology (CalTech). As a result, the application is assig.......
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New and Useful - April 5, 2013
April 05, 2013
Post by Blog Staff
· In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. the Federal Circuit clarified several points relating to claim construction, determinations of non-obviousness, and calculation of damages. The court confirmed that claiming a “circuit” in conjunction with a sufficiently definite structure for performing the identified function is adequate to bar means-plus-fu.......
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Federal Circuit clarifies burdens of proof when priority to earlier application is contested
November 11, 2008
Post by Blog Staff
In a recent decision, the Federal Circuit affirmed a district court's determination that the asserted claims of a patent were not entitled to the effective filing date of the earliest application in a chain of four applications, and that as a result the claims were anticipated by intervening prior art. The court explained its recent decision in PowerOasis, where the court seemed to put the burden of proof on.......
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Ninth Circuit: Trademark claim over use in video game stripped away by First Amendment
November 07, 2008
Post by Blog Staff
In a decision Wednesday, the Ninth Circuit affirmed a district court's grant of summary judgment that the producer of Grand Theft Auto: San Andreas had a First Amendment defense against a claim of trademark infringement. The plaintiff owns a strip club known as the "Play Pen" on the eastern edge of downtown Los Angeles. Grand Theft Auto: San Andreas includes, in its fictional city "Los Sant.......
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BPAI: 102(e) art can be effective prior art as of provisional priority date
October 29, 2008
Post by Blog Staff
In a decision recently designated precedential, the Board of Patent Appeals and Interferences considered the question of whether a reference that is prior art under § 102(e) is prior art as of its provisional priority date or the actual filing date of the reference. In affirming the examiner, the Board determined the reference was prior art as of its provisional date, as long as the relied-upon disclosure .......
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Priority claim contained in data sheet and appended via certificate of correction valid
May 15, 2008
Post by Blog Staff
In a decision yesterday, the Federal Circuit vacated a district court's denial of a preliminary injunction. The district court denied the injunction on the basis of a substantial question of validity of the patent. The accused infringer alleged the patent was invalid under 35 U.S.C. § 102(b) based on a prior public use by the patentee, and argued that created a substantial question regarding the valid.......
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When priority not decided at PTO patentee bears burden of showing entitlement to earlier application
April 14, 2008
Post by Blog Staff
In a decision Friday, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity with respect to all asserted claims of two patents. More particularly, the court held that the claims of the patents were not entitled to the priority date of an earlier-filed application, and were therefore anticipated by intervening prior art. The original application was filed in 1997, however th.......
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Section 121 safe harbor applies only to divisional, not continuation-in-part; later patent invalid
March 12, 2008
Post by Blog Staff
In a decision last week, the Federal Circuit construed the scope of § 121's allowances for subsequent patent applications directed toward nonelected inventions in response to a restriction requirement. There were three patents at issue, one directed to pharmaceutical compounds, one to compositions containing those compounds, and a third covering methods of suing the compounds. The method of use patent .......
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Corroboration of reduction to practice must corroborate that invention worked for intended purpose
December 05, 2007
Post by Blog Staff
In a decision today, the Federal Circuit affirmed the BPAI's decision in an interference proceeding awarding priority to the senior party. The junior party attempted to show an actual reduction to practice before the senior party's priority date.While the junior party offered evidence of an earlier actual reduction to practice, the corroborating evidence was insufficient. The corroborating witness just.......
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Incorporation by reference did not incorporate necessary disclosure, priority chain broken
November 07, 2007
Post by Blog Staff
Today, the Federal Circuit held a patent was anticipated under 35 U.S.C. § 102(b) by another patent earlier in the patent-in-suit's priority chain. The court held the district court erred in finding that the patent at issue was entitled to a priority date of the earlier-filed patent, leading to the district court's improper conclusion that the patent was not anticipated by an earlier filed patent.T.......
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Priority claim to foreign filing awarded in interference; disclosure in compliance with section 112
August 21, 2007
Post by Blog Staff
The Federal Circuit yesterday addressed the requirements for the use of a foreign filing date as a priority date in a U.S. interference proceeding. The court awarded the interference party the priority benefit of the foreign filing date based on the "constructive reduction to practice of an invention whose disclosure is in compliance with the requirements of § 112." As a result, the court reverse.......
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Priority claim under section 119 denied; foreign application not filed "on behalf of" U.S. applicant
August 08, 2007
Post by Blog Staff
Today the Federal Circuit addressed whether priority to an earlier-filed foreign application may be claimed under § 119(a) if there was no legal relationship between the foreign applicant and the U.S. applicant at the time the foreign application was filed. The court held that the right of priority under § 119(a) is personal and determined at the time of filing. As a result, in order to claim priori.......
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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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