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March 21, 2021

Comments

I would love to see sanctions against those who so obviously ploy the "Patent Tr011" narrative.

The protection of a property right - a negative right such as a patent - does not depend on EITHER the owner, nor any infringement liability aspect of any positive aspect of the patent holder practicing the patent.

Let's see at least treble damages here.

If so many claims are highly susceptible to being challenged as invalid and/or unpatentable, then, instead of suggesting an issue with litigation favoring one side, that would seem just as—if not more—consistent with the quality of the claims simply being lousy.

And the advice given in response to that phenomenon also would appear to be counterintuitive. If one is truly concerned that a large portion of the claims may have issues, then it seems a bit improper to recommend throwing the figurative kitchen sink of infringement contentions without doing the needed investigation beforehand to weed out the more problematic claims.

I of course get that asserting a vast array of claims has a nice in terrorem effect, but if one chooses to do that, then I'm not sure how it's ok to turn around and complain when a good chunk of those claims get deep sixed.

-hr

I have long urged that those who draft patents should ensure compliance with the Viagra criterion: the claimed subject-matter should be strong enough not only to pass the patent office but also to stand up in court. Although put in hopefully humorous terms, this requirement is anything but trivial and requires caution both at the drafting stage and on initiation of litigation where careful selection of the claims to be asserted is desirable. If the broadest asserted claim fails, there is often something of an avalanche effect insofar as that the court may not take the other claims as seriously. It should be mentioned, by way of background, that in the UK, and if my recollection is correct also in Canada, the claims in the Viagra patent did not stand up in court.

Very well put by Paul Cole. I fully agree.

All well and good, Mr. Cole.

But again, are you confusing "Best Practices" with an issue with how our US laws are being applied?

The answer to misapplication of law is NEVER "well, you need to write at a higher degree to withstand such misapplication."

Mouthing what amounts to platitudes of "Best Practice" (even as the words DO have value in a "Best Practices" mode) simply is NOT HELPFUL in addressing problems in the application of law.

This comes across as an abdication of our responsibilities as attorneys to fight errant applications of law.

@ Skeptical

I fully understand your comments about the application of law.

But we do not know whether the situation might improve in 20 days, 20 weeks or 20 years. In the meantime we have to do our best in the situation in which we find ourselves. If we can draft our specifications with foresight to avoid misapplication of the law, for example by explaining clearly the new results achieved and how this is done and avoiding over-broad and speculative claims, that is merely normal prudence and professional care. If we look back to the State Street case some years ago, the real objection was not lack of eligibility but under 35 USC 112(f) functional elements in the claims unsupported by the essential structure in the description to support these elements, and ought to have been addressed during USPTO examination.

Mr. Cole,

Yet again, you seem to confuse best practices with the actual issue at hand.

Verily, it is IMPOSSIBLE to set out a standard of your, "with foresight to avoid misapplication of the law."

If you CAN do that, you are in the wrong business.

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