U.S. Patents Blog Wenderoth, Lind & Ponack, L.L.P.
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These are all the Blogs posted in February, 2007.

February 27, 2007
No Announcement on PTO's Proposed Rules

The USPTO issued proposed new rules regarding claim practice and continuation practice in January 2006. New rules regarding IDS practice were also proposed by the USPTO in July 2006. Since being proposed, there has been substantial opposition to the proposed new rules by American patent lawyers. To date, no formal USPTO announcement regarding the proposed new rules has been made. A spokesperson for the USPTO states that the rules are still under consideration. WL&P will notify our clients of any developments regarding the proposed new rules when they occur.  

Posted by:  Warren M. Cheek, Jr.

Posted By: Wenderoth Lind and Ponack, L.L.P in Category: Patents
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U.S. Supreme Court Developments - Patent Licensee May Challenge the Validity in a Declaratory Judgment Action

The U.S. Supreme Court has ruled in an 8-1 decision that a patent licensee may challenge the validity of the licensed patent in a declaratory judgment action, even though the licensee is still paying royalties and is not in breach of the contract. MedImmune Inc. v. Genentech Inc., U.S., No. 05-608, slip op.1/9/07. The Court ruled that Medimmune need not stop paying royalties to Genentech in order to challenge the validity of Genentech's patent in a declaratory judgment action. The decision reversed the underlying Federal Circuit decision and overturns the Federal Circuit decision in Gen-Probe Inc. v. Vysis Inc., 350 F.3d 1376,70 USPQ2d 1087 (Fed. Cir. 2004).


As a result of the Court's decision, more patent licensees are expected to challenge the validity of the licensed patent, since it is no longer necessary to breach the license agreement and risk treble damages for infringement in order to challenge the patent. 

Posted by:  Warren M. Cheek, Jr.

Posted By: Wenderoth Lind and Ponack, L.L.P in Category: Patents
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New USPTO Service: Electronic Certified Copies of Foreign Priority Documents
On January 16, 2007, the USPTO implemented a new service allowing an applicant to request that the PTO obtain an electronic copy of a foreign priority document from a participating foreign patent office. Under existing practice, patent applicants are required to file a certified copy of the foreign priority document with the PTO before the patent application can be issued. The new rule enables this requirement of a certified copy to be satisfied by filing a request that the PTO obtain an electronic version of the foreign priority document from a participating foreign patent office. The new rule stipulates that the electronic copy must actually be obtained by the PTO for the requirement to be met, but if the PTO is unable to obtain the electronic copy, the applicant will be notified and given an opportunity to file the conventional certified hardcopy. Currently, the only participating patent offices are the USPTO and the EPO.  However, the JPO will become a participating patent office later this year.   The applicant may request that the PTO obtain the electronic copy of a foreign application originally filed in a non-participating patent office from a participating patent office if the electronic copy is stored in the application file of the participating office. For example, if the foreign priority document is a Japanese patent application, and the EPO has an electronic copy of the Japanese application in the file of a corresponding European application, the applicant for a U.S. patent claiming priority to the Japanese application can request that the USPTO obtain the electronic certified copy from the EPO. The USPTO and EPO are providing the electronic copies to the participating patent offices at no charge to applicants. Therefore, this new rule will effect a cost savings by not requiring the applicant to purchase a certified hard copy of the foreign priority document for filing in the U.S. application. 

Link to the Federal Register Notice: http://www.uspto.gov/web/offices/com/sol/notices/72fr1664.pdf 

Posted by:  Jeffrey R. Filipek
Posted By: Wenderoth Lind and Ponack, L.L.P in Category: Patents
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