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Scope: Enemy of Term? Envisioning the Future Scope of Claims: Impact of Recent Decisions

Scope: Enemy of Term? Envisioning the Future Scope of Claims: Impact of Recent Decisions. Vicki G. Norton San Diego AIPLA Spring 2009 The views expressed herein are my own and do not reflect the views of other speakers on the panel, clients or of Duane Morris.

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Scope: Enemy of Term? Envisioning the Future Scope of Claims: Impact of Recent Decisions

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  1. Scope: Enemy of Term?Envisioning the Future Scope of Claims: Impact of Recent Decisions Vicki G. Norton San Diego AIPLA Spring 2009 The views expressed herein are my own and do not reflect the views of other speakers on the panel, clients or of Duane Morris

  2. The Patent Squeeze 102 In re Gleave In re Chuang 112 Ariad v. Eli Lilly ICU Medical 103 KSR In re Kubin

  3. SCOPE: ENEMY OF TERMHELD NOT PATENTABLE (35 U.S.C. § 102) In re Gleave

  4. SCOPE: ENEMY OF TERMHELD NOT PATENTABLE (35 U.S.C. § 102) In re Chuang (Bd.) 4

  5. SCOPE: ENEMY OF TERM HELD NOT PATENTABLE (35 U.S.C. § 103) In re Kubin 5

  6. SCOPE: ENEMY OF TERM: 35 U.S.C. § 112 Ariad v Eli Lilly 6

  7. SCOPE: ENEMY OF TERM: 35 U.S.C. § 112 ICU Medical v. Alaris 7

  8. SCOPE: ENEMY OF TERMAVOID LATE-DISCOVERED ART • Do search & diligence early to avoid supplemental filings or RCE that decrease PTA • E.g., Inventor publications; rejections in related cases • Meeting notes from inventors & employee co-workers of inventor? (Monsanto v Bayer) • Details of testing to distinguish prior art (Aventis v Amphastar) • Filing RCE eliminates Type B (Post 3-year) PTA

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