Your Patents May Not Be Safe

By on December 14, 2017

Executive Summary of an article written by
Curtis Vock and Douglas Link, Lathrop Gage LLP

Patents are running afoul of rigorous new U.S. standards on several important aspects of patent law. The trend started around 10 years ago when the U.S. Supreme Court made it much easier to label an invention “obvious,” and thus not patentable. The U.S. Patent Office sometimes uses “obviousness” arguments to deny applications, but a competitor can also make such arguments, either in court or at the Patent Trial and Appeal Board. Another relatively recent argument for invalidation is the question of “possession.” In 2010 the U.S. Court of Appeals for the Federal Circuit court issued a decision requiring patent descriptions to demonstrate “possession” of the invention claimed at the time of filing.

A trio of U.S. Supreme Court cases beginning in 2012 (Mayo Collaborative Services v. Prometheus Laboratories, Inc., Association for Molecular Pathology v. Myriad Genetics, Inc., and Alice Corp. v. CLS Bank International) have made it much easier to label an invention “natural law,” and thus ineligible for patenting. They also made it easier to label a patent “abstract” — another ineligible category.

Companies must become more diligent when filing new patent applications. The written description is the foundation for “fallback” positions (narrower patentable scope for your inventions than originally envisioned at filing) to counter challenges to validity based on anticipation, obviousness, indefiniteness or possession. Now is a good time for companies to examine their strategy for filing stronger and better patents.

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