Patent Happenings, August 2008


Newsletter presents concise summaries of important developments in U.S. patent law occurring during the month of August, 2008.

Developments include:

1) Safe harbor provision of § 271(e)(1) did not apply to research tool used in obtaining data for FDA submission where tool itself was not subject to FDA pre-market approval;

2) Evidentiary burdens for inequitable conduct must be “strictly enforced”;

3) Patentee must take some affirmative action to show case or controversy for declaratory judgment;

4) Patentee may not base irreparable harm to support an injunction on harm allegedly suffered by non-joined exclusive licensee;

5) No grace period for an accused infringer to cease accused activity before being liable for damages when given notice under § 287(a);

6) “Original application” for purposes of eligibility for inter partes reexamination includes continuing applications;

7) Federal Circuit addresses inherent anticipation of structure claimed with a functional limitation;

8) Oral opinion of counsel, obtained post-verdict, defeats willful infringement charge for post-verdict sales;

9) One district court partially lifts stay during reexamination so patentee can obtain discovery to rebut PTO’s obviousness rejection; second district court refuses to permit accused infringer’s confidential discovery materials to be released for use by patentee in reexamination proceeding; and

10) PTO will issue a new effective date for regulations governing applications with patentably indistinct claims.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Robert Matthews, Jr., Matthews Patent-Law Consulting | Attorney Advertising

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