Importance of Due Diligence for Patent Practitioners and the US/China Economic War

Importance of Due Diligence for Patent Practitioners and the US/China Economic War

by Dennis Crouch

37 C.F.R. § 11.18(b) imposes crucial responsibilities on patent applicants, attorneys, and agents. Documents submitted to the USPTO implicitly certify that:

  1. Statements made are true or are are believed to be true (based upon information and belief) and do not include any attempt to conceal a material fact; and
  2. That a reasonable inquiry was conducted to confirm that: (i) statements have no improper purposes, (ii) legal contentions are supported by existing law or valid arguments for change, (iii) allegations and factual contentions have or are likely to have evidentiary support, and (iv) denials of factual contentions are based on evidence or a reasonable lack of information or belief.

Recent USPTO disciplinary cases underscore the seriousness of these obligations. Examples include filing a micro entity status request without proper investigation and submitting an information disclosure statement (IDS) by a non-practitioner without practitioner review. Rubber stamping is not permitted.

The PTO Just released a final order in a case against Jinggao Li, operator of the Dragon Sun Law Firm.  In re Li, D2023-19 (PTO Order).  Li received a public reprimand for relying on foreign counsel’s guidance on micro entity status, resulting in unwarranted status in 19 of 27 cases.  

Continue reading Importance of Due Diligence for Patent Practitioners and the US/China Economic War at Patently-O.

Functional Claims: Morse, Halliburton & Amgen

Functional Claims: Morse, Halliburton & Amgen

by Dennis Crouch

In the patent context, functional limitations describe inventions in terms of their function or intended use, rather than their specific structure or components. Such claims have been subject to much debate and litigation throughout the history of the US patent system. Notable Supreme Court cases like O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854) and Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) significantly impacted patent practice and the balance between functional and structural claim drafting.

The pending Supreme Court case of Amgen Inc. v. Sanofi, No. 21-757 (2023) is another example, with the potential to further shift the landscape regarding functional claim limitations. The title of my essay on the case following oral arguments, “Bye Bye Functional Claims,” hints at my outlook. Although the patentee focused on other issues in its briefing, the Justices repeatedly questioned the permissibility of broad functional claim limitations.

Samuel Morse, inventor of the telegraph and Morse code, revolutionized communication. Morse’s 1840s patent included a controversial functional claim covering any method of transmitting information using electromagnetism, irrespective of the machinery used. Morse’s claim comprised a single element – the use of electromagnetism to communicate at a distance.

Continue reading Functional Claims: Morse, Halliburton & Amgen at Patently-O.

Functional Claims: Morse, Halliburton & Amgen

Functional Claims: Morse, Halliburton & Amgen

by Dennis Crouch

In the patent context, functional limitations describe inventions in terms of their function or intended use, rather than their specific structure or components. Such claims have been subject to much debate and litigation throughout the history of the US patent system. Notable Supreme Court cases like O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854) and Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946) significantly impacted patent practice and the balance between functional and structural claim drafting.

The pending Supreme Court case of Amgen Inc. v. Sanofi, No. 21-757 (2023) is another example, with the potential to further shift the landscape regarding functional claim limitations. The title of my essay on the case following oral arguments, “Bye Bye Functional Claims,” hints at my outlook. Although the patentee focused on other issues in its briefing, the Justices repeatedly questioned the permissibility of broad functional claim limitations.

Samuel Morse, inventor of the telegraph and Morse code, revolutionized communication. Morse’s 1840s patent included a controversial functional claim covering any method of transmitting information using electromagnetism, irrespective of the machinery used. Morse’s claim comprised a single element – the use of electromagnetism to communicate at a distance.

Continue reading Functional Claims: Morse, Halliburton & Amgen at Patently-O.