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Category Archives: Patent Prosecution

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Playing Fast and Loose With Corroborating Evidence: Patent Advocacy Inequitable Conduct

Posted in Inequitable Conduct, Patent Litigation, Patent Prosecution, Rules of Professional Responsibility

Patent litigation often involves the assertion of prior art anticipation and obviousness defenses.   U.S. patents are presumed valid, so a defendant seeking to overcome this presumption must persuade the fact-finder of a patent’s invalidity with clear and convincing evidence.  Corroborative evidence of invalidity—e.g., contemporaneous documents, physical specimens and witness testimony—is generally necessary to satisfy this… Continue Reading

In re Beineke: Cultivating the Legal Boundary Between the Exploring and Patenting of Plant Life

Posted in Patent Applications, Patent Prosecution, Plant Patents

Plant breeders and plant explorers once captivated the imagination as our true American heroes in the late 19th and early 20th century. Luther Burbank, our country’s most famous plant breeder, became known as the “Edison of the Garden” and the “Wizard of Santa Rosa.” His small office in his research gardens—where he used to meet… Continue Reading

The Patent Legal Malpractice Implications of “Walker Process” Antitrust Claims

Posted in Conflicts of Interest, Inequitable Conduct, Insurance Claims, Legal Malpractice, Patent Litigation, Patent Prosecution, Proximate Causation, Rules of Professional Responsibility

As experienced trial lawyers know, successfully trying or defending a case is all about presenting a compelling, understandable theme and narrative that comports with a judge and jury’s common sense and experience. Juries especially are prone to favor litigants and lawyers they like and case theories they easily understand.  That is human nature on display… Continue Reading

Is it Time for Federal Courts to Stop Exercising Jurisdiction Over Patent Legal Malpractice Claims?

Posted in Conflicts of Interest, Expert Witness, Federal Jurisdiction, Legal Malpractice, Patent Litigation, Patent Prosecution, Rules of Professional Responsibility

During past month when many patent practitioners may have been distracted by the “laws of nature” meaning of the Mayo v. Prometheus decision, the Court of Appeals for the Federal Circuit issued four precedential rulings confirming the exclusive authority of federal courts to adjudicate patent legal malpractice claims.  Only the Supreme Court can alter this… Continue Reading

The Perils of Patent Prosecution Delegation: A Cautionary Tale

Posted in Expert Witness, Legal Malpractice, Patent Prosecution, Rules of Professional Responsibility

What happens when a start-up company (Protostorm) retains a sole practitioner to prepare provisional patent applications, another solo lawyer to prepare the corresponding U.S. non-provisional application, and yet another firm to file the resulting Patent Cooperation Treaty (“PCT”) application?  This is getting complicated, right? Add to this mix these salient facts: (1) neither Protostorm nor… Continue Reading

Have You Been “Hired,” But Not “Retained”? and Other Life Lessons from Davis v. Brouse McDowell

Posted in Expert Witness, Legal Malpractice, Patent Prosecution, Proximate Causation

Davis v. Brouse McDowell (pdf) is the Federal Circuit’s first precedential patent legal malpractice decision issued in 2010. It offers yet another cautionary tale for both plaintiffs and defendants in their pursuit and defense of patent legal malpractice claims. Most will read and analyze the Davis case for its ultimate holding, i.e., conclusory expert witness testimony regarding… Continue Reading