tag:blogger.com,1999:blog-5574479.post1100274131870269695..comments2024-03-28T16:45:51.051+00:00Comments on The IPKat: Two new Patents Court judgmentsVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger11125tag:blogger.com,1999:blog-5574479.post-77380346224566223682009-07-18T12:29:48.372+01:002009-07-18T12:29:48.372+01:00Darren,
When you say "fact that the assignee...Darren,<br /><br />When you say "fact that the assignee of the US filing will be the UK company is apparently enough for a valid priority claim", what is the basis for this? There is a US case (Boston Scientific Scimed v. Medtronic 497 F.3d 1293 (Fed. Cir. 2007)) that seems to say the opposite:<br /> " a foreign application may only form the basis for priority under section 119(a) [35 USC] if that application was filed by either the US applicant himself, or by someone acting on his behalf at the time the foreign application was filed" - does anyone an employer filing a UK application from an employees invention count as someone acting on behalf of the inventor (employee)?Anna Molonynoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-44390834107251128132009-06-21T17:55:34.616+01:002009-06-21T17:55:34.616+01:00Does Edwards v Cook change accepted practice more ...Does Edwards v Cook change accepted practice more dramatically than meets the eye? According to parg 5.19 of the UK IPO Manual of Patent Practice:"<br /><br />5.19 For priority to be claimed, the person making the application in suit must be the same person who made the earlier application or must be his successor in title.<br />Where there are several applicants on one or both applications it is sufficient if the two applications have an applicant in common... "<br /><br />In this case, the later application does have a successor in title of the first application as an applicant... Thus, although the above text does not quite say it, one would have thought that it would have been sufficient for the later application to have an applicant who was successor in title of the first application.<br /><br />Consider the simpler situation - Mr Obermiller had filed the original US application jointly with two others but had never assigned the invention and the PCT application had been filed by Mr Obermiller and noone else. Under 5.19 of the Manual of Patents Practice the PCT application would clearly have been entitled to priority... however, this judgement appears to indicate that that would no longer be the case...<br /><br />Coach and horses...?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-79674651734980945722009-06-19T10:59:34.843+01:002009-06-19T10:59:34.843+01:00Well, yes, up to a point Luke. You're chem/bio...Well, yes, up to a point Luke. You're chem/bio, right? That's why I wrote "context". We are here thinking about a valve, and folks who design valves, and people who decide on the "form" of a valve. I don't think "made of" excludes a minor constituent of something other than collagen. Others?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-6141268504954282802009-06-19T09:26:25.808+01:002009-06-19T09:26:25.808+01:00'If it is the collagen material that gives the...'If it is the collagen material that gives the "valve" its finished "form" then that valve must have been "made of" that material, no?'.<br /><br />Well, no, not to my mind. <br /><br />"Made of" something to me means made (essentially) of that thing and not something else - "consists of", in other words. "Formed (or indeed, made, or fashioned, etc.) *with* something, ignoring the process issues you alluded to, seems to me to say "includes", not "consists of".<br /><br />E.g. if I said "the excipient is made of gum arabic" I'd hope that would be understood as "consists essentially of gun arabic"; if I said, in a similar context "the excipient is formed/made with gum arabic" I'd hope that would be understood as "includes gum arabic" - to me the words "of" and "with" have rather different meanings.<br /><br />Its the reason we write "consists of" and not, for example, "consists with".<br /><br />Cheers, LukeLuke Ueda-Sarsonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-23990119441361410932009-06-18T12:10:53.225+01:002009-06-18T12:10:53.225+01:00What Luke, like "This horseshoe was formed wi...What Luke, like "This horseshoe was formed with a hammer" perhaps? But, in the context of the patent in suit, I can't see much to quibble about. If it is the collagen material that gives the "valve" its finished "form" then that valve must have been "made of" that material, no?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-39572609023934960182009-06-18T08:54:27.513+01:002009-06-18T08:54:27.513+01:00Any comments on how at para. 72-73 in Edwards Life...Any comments on how at para. 72-73 in Edwards Lifesciences, the judge says "formed with X" means "made from X"?<br /><br />I can see multiple issues with this equation. <br /><br />Regards, LukeLuke Ueda-Sarsonnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-10143180309318582842009-06-18T03:03:44.707+01:002009-06-18T03:03:44.707+01:00and basis for the above may be found in the follow...and basis for the above may be found in the following wordings <br /><br />s5(3)... so disclosed in two earlier relevant applications filed by the same applicant (the corporate applicant in the present case)as in the case of the application in suit or a predecessor (the inventor of the invention in whose name the US application was filed) in title of his ...<br /><br />is my understanding correct? Kindly confirm. Thank you.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-8366593172516595392009-06-17T12:36:16.622+01:002009-06-17T12:36:16.622+01:00Sorry, I answered the reverse case of where the pr...Sorry, I answered the reverse case of where the priority application is filed in the US in the name of the inventor. In the case that Anonymous 2 raises, the fact that the assignee of the US filing will be the UK company is apparently enough for a valid priority claim, even though it is filed in the name of the inventors initially. Priority is very rarely important in the USA in any case.<br />Darren SmythAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-23775539949053828352009-06-17T12:32:46.712+01:002009-06-17T12:32:46.712+01:00The answer to anonymous 2 is that the US applicati...The answer to anonymous 2 is that the US application must be assigned, with the priority right, to the company during the priority year.<br /><br />Darren SmythAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-40148004326834718962009-06-17T12:28:46.379+01:002009-06-17T12:28:46.379+01:00"A person who files a patent application for ..."A person who files a patent application for an invention is afforded the privilege of claiming priority only if he himself filed the earlier application from which priority is claimed or if he is the successor in title to the person who filed that earlier application."<br /><br />Presumably there is something in US law which gets round this stipulation? For example if inventor A works (to invent etc.) for company B in the UK and company B files a patent application in the UK in its name, how does the US filing claim priority when it needs to be filed in the name of inventor A? In fact, if you read a typical declaration filed after filing a US application it is the inventor who claim priority, but are they entitled to do so?<br /><br />No doubt there is a simple answer to this, but please can someone enlighten me.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-81958735203148650552009-06-17T09:35:46.108+01:002009-06-17T09:35:46.108+01:00BAILII has been very active recently. There is als...BAILII has been very active recently. There is also an appeal court decision:<br /><br />http://www.bailii.org/ew/cases/EWCA/Civ/2009/498.html<br /><br />Also, a further patents court case:<br /><br />http://www.bailii.org/ew/cases/EWHC/Patents/2009/1312.html<br /><br />which among other grounds for invalidity inclued that of being a mere discovery.<br /><br />EdTAnonymousnoreply@blogger.com