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DPITC-PCAARRD Why it is okay to draft "bad" invention applications

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Bayani Loste

on 19 September 2017

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Transcript of DPITC-PCAARRD Why it is okay to draft "bad" invention applications

Legal Issues Relating to Patent Drafting
Why is it okay to draft "bad" invention applications
Fear of Mistake
Rules Drafted to Account for "Mistakes"
Challenge:
Why aren't we filing more invention applications?
Premise: RDI's as business units
Managers and
Personnel
Funds and
Equipment
Patent Drafting Skill Set
Prior Art Search
Patent Drafting
Licensing of
Intellectual
Property
Institutional Research and Development
Faculty studies
Student theses
Community technology
Fundamentals
of Intellectual
Property
Patent
Agent
Qualifying
Examinations
Artistic Mind
Patent Protection
Incentive Package


1,000 invention applications
December 2015
Stops us in our tracks!
Disclaimer:
"bad"
Complied with all the formality requirements:
Request (Rule 404)
Disclosure and Description
(Rules 405 and 406)
Contents of the Description (Rule 407)
Technical Field
Background of the Invention
Disclosure of the Invention
Description of Drawings
Detailed Description of Embodiment
Drawings
Abstract
Claims
Don't!
Do!
Role of the Examiner
(Rules 900, 901, and 902)
Examiner gives applicant opportunity to show that invention is patentable.
Trivia: Why "
letters patent
" and
not "
patent letters
?"
The phrase comes from the Latin
"
litterae patentes
" which means a collection
of letters of the alphabet arranged to be read.

Not to be confused with "epistle," so there is no singular form
Our role as patent agents is to secure the broadest protection possible by defining the invention in the broadest sense allowed by the Examiner.
We need to change our attitude towards Office Actions
And go back to the drawing board.
Unity of Invention
(Rules 604, 605, and 606)
You can divide an application with more than one inventive concept and retain the priority filing date.
Amendments of the Description, Claims, Drawings (Rules 918, 919, 920, and 923)
You can amend the Description, Claims, and Drawings as long as no new matter is introduced.
Revisions to Amendments (Rule 924)
If you commit a mistake in formulating the amendments, you can still revise the changes you made.
Petition to Admit Amendments (Rule 927)

If the Examiner refuses to admit the changes you want to introduce in your application, you can go to the Director of Patents so he can direct the Examiner to admit the revisions you proposed.
What is the worst thing that could happen during
ex parte
prosecution?
Prosecution Purgatory
Or a narrowly defined invention...
but still registered.
cancellation actions take time...
SmithKline Beckman Corporation vs. The Honorable Court of Appeals and Tryco Pharma Corporation
(G.R. No. 126627, 14 August 2003)
Regular court cancellation action
Counterclaim allegation by Tryco Pharma in answer to the patent infringement case filed by competitor SmithKline.
RTC dismissed SmithKline's infringement case and canceled its letters patent 14561!
(Pause for effect.)
On appeal, Court of Appeals dismissed infringement case but upheld validity of letters patent.
SC affirmed CA, infringement case dismissed but Letters Patent '561 valid.
When language of claims is clear, patentee bound and may not get anything beyond them.
No "Albendazole" in '561, thus no infringement.
Mind the years:
1976: '561 invention application
1981: '561 letters patent issued
1998: '561 expiration (17 years from issue)
2003: SC resolved case
'561 had been "off-patent" for 5 years
1991: RTC dismissed case
2003: SC Decision
Total: 12 years, excluding years when case pending before RTC
SmithKline Beecham vs. Natrapharm, Inc. (Appeal No. 14-07-33, IPC No. 14-2006-00024,
21 September 2010)
Inter Partes Cancellation Case
Filed by Natrapharm against Letters Patent No. 1-1996-52993 for "Method of Treatment" with issue date 5 May 2005

Mind the years:
1996: '993 application filed
2005: '993 letters patent issued (2022 valid)
2006: cancellation case filed
2010: DG Decision,'993 cancelled
No appeal to
CA-SC on record
Assuming 5-7 years on appeal, SmithKline would still have 10 years from patent during the cancellation proceedings
by Bayani B. Loste
for IP Management Training
DPITC-PCAARRD
20-22 September 2017
bbloste@fnslaw.com.ph

Summary: Practice of patent agent profession
Practice: mistakes are inevitable
Philippine patent system: Sufficient elbow-room for errors
Wittingly: Revised Rules for Patents, UM and ID
Unwittingly: "due process" in cancellation actions
Draft as many invention applications
And allow the system to work.
One more thing...
Full transcript