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May 25, 2011


Thanks for the excellent summary, Kevin. I wonder: if any of the attorneys involved in those now-implicitly-admitted-to-be-wrongly-decided cases are up on malpractice charges before their state bars or are being sued for the same in court, does this decision now provide them with a defense?

This seems like good news for prosecutors who do not enjoy 'dumping' long lists of references onto Examiners - it wastes Examiner time, client time/money and my time.

HOWEVER - the I4I vs Microsoft case is now pending before SCOTURS. Microsoft argues that the presumption of validity should only exist for art actually considered by the PTO. If Microsoft prevails, it seems like patent prosecutors would once again (albeit for different reasons) have a 'perverse' incentive to flood the Examiner with art in order to make it more difficult for a challenger to find prior art that was 'not considered.' If anything, the incentive to flood th Examiner with art would be stronger than ever. I would argue that the 'spirit' of Thersanse places the burden of proving that relevant art was 'buried' by irrelevant art on the accused infringer.

QUESTION ---- Is it possible that in a few short weeks, Scotus could 'take back' the gift bestowed upon the patent bar yesterday by the Federal Circuit ?

What are your thoughts on this issue?


I am in agreement with your sentiments.

I remain skeptical about the certainty of any particular outcome.


Thank you for this very thorough summary of the case. As a European Patent Attorney specialising in filing US Patents in Europe, I’m wondering what effect Therasense might have when it comes to US Patents being filed at the EPO. My initial thoughts are that the effect in Europe will be minor – perhaps the whole patent granting system will be speeded up slightly. But perhaps I’m overlooking something more significant?

What effect do you think that the Therasense case might have on US Patents that are also being filed in the UK, Europe and, indeed, the rest of the world?

Rosemary Eve

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