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   Newly Minted Patent Agent w/ ?'s
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m
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Re: Newly Minted Patent Agent w/ ?'s
« Reply #5 on: May 18th, 2004, 1:18am »
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> Combine that with the trend away from the doctrine of equivalents  
 
Can you explain this? I assume you're refering to PHE?
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JimIvey
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Re: Newly Minted Patent Agent w/ ?'s
« Reply #6 on: May 18th, 2004, 8:46am »
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PHE (prosecution history estoppel) is an exception to the doctrine of equivalents (DoE) which in turn is an exception to the general rule that a claim covers what it says it covers.
 
The DoE is quite complex, but let's just say that you can avoid literal infringement yet still infringe if you substitute a claimed element which its equivalent.  What "equivalent?"  Who knows?  There used to be a tripartite (3-part) test of (i) performs substantially the same function (ii) in substantially the same way (iii) to obtain substantially the same result (function/way/result).  If you think too hard about that phrasing, it's simply a more wordy way to ask if the thing is "equivalent", albeit in a functional manner.
 
Suppose, for whatever reason, a claim recites that a device is implemented as an ISA card.  The accused device is a PCI card.  It doesn't infringe literally, but should it infringe?  PCI cards are known and obvious replacements for ISA cards.  Suppose the accused device is a USB device....  should that infringe?
 
Under PHE, you couldn't capture the PCI device if you have specifically amended the claim to no longer recite the PCI card.  Under Festo, if you amended that claim element for any reason related to patentability, you could never capture anything but an ISA card.
 
Festo was about exceptions to PHE -- about the types of amendments that shouldn't bar application of the DoE.  I think one of the Judges said something like "this case is about an exception to an exception to an excpetion to the general rule" that a claim covers what it says it covers.
 
Now, why did I make that original comment?  Consider my example above.  Why did the patent practitioner claim an ISA device?  Maybe at the time ISA devices were the only commonly used bus device.  That's very poor foresight and thinking by the patent practitioner, but it's the patent holder that pays for that shortsightedness.  Maybe there's something specific to the ISA architecture which made the invention really cool and so the claim was intentionally limited to ISA architectures.  In that case, the PCI device shouldn't infringe.  
 
The problem (as I see it) is that the simplicity of the rule that a claim covers what it says it covers requires perfect clairvoyance on the part of patent practitioners.  I readily admit to human fallibility, and I've seen much worse than myself out there.  I've seen claims which claim "a user" among other things.  Who makes, sells, or uses anything which includes "a user?"  
 
In addition, patent practitioners are frequently given very limited budgets.  Patent applications typically cost $2,000-20,000 depending on the complexity of the technology.  Patent litigation costs $2-3 million.  And the stakes can be rather high (see, e.g., Eolas v. MSFT award of $520 million).  So, $2.5 million will be spent parsing a document built with $10,000 and with $0.5 Billion at stake.
 
Of course, the economists out there will tell you that, once the rule that perfect foresight is required propagates, applicants will adjust their budgets accordingly.  So, after Festo, shop around carefully for top-shelf practitioners (better foresight) and be prepared to spend more money, especially as the clairvoyant practitioners raise their rates in view of the increased demand.
 
I hope that explains things.  Let me know if I left something unclear.
 
Regards.
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James D. Ivey
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m
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Re: Newly Minted Patent Agent w/ ?'s
« Reply #7 on: May 20th, 2004, 12:56am »
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Yes, thank you for the explanation.  
 
Interestingly, in the UK, in recent litigation, the judge explictly discounted the whole notion of referring to prosecution history by stating that it would add too much complexity to claim interpretation, and a patent should be taken for what it is at face value without the need to refer to other documents. I think this was a fantastic way to keep the system fairly balanced.
 
 
 
« Last Edit: May 20th, 2004, 12:57am by m » IP Logged
IPLoya
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Re: Newly Minted Patent Agent w/ ?'s
« Reply #8 on: May 21st, 2004, 7:42am »
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I don't think it's necessarily bad to license agents who have not interned.  As evidenced by the OP' question, the newly licensed agent is aware of his limitations and his ethical responsibilities, and is unlikely to go off half-****ed and negligently file a bunch of crappy patent applications.  A firm, in recognition of its own liability, is also going to acknowledge the limitations of the newly licensed agent, and will train the associate and/or check his work before it goes out.  The agency exam objectively tests all the stuff that is important to ensuring the agent will know how to use the MPEP efficiently, to know or at least be familiar with all the deadlines and statutory principles surrounding the application, and as we all know this test was a pregnant dog - you can't slide by too easily without having really learned something.
 
As to the OP' question, you can start with Landis on Mechanics of Patent Claim Drafting - 4th or 5th ed. - to learn how to do the Claims, which you now know are the "metes and bounds," and arguably the most important part of the app.  Although experience helps, you will eventually find employment as a new agent seeking experience and get some on the job training.
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Jeff Travis
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Re: Newly Minted Patent Agent w/ ?'s
« Reply #9 on: May 21st, 2004, 8:44am »
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To answer your question as to materials, I would recommend two very good resources for patent agents/attorneys:
 
Jeffrey Sheldon: How to Write a Patent Application
Landis: The Mechanics of Claims Drafting
 
These are pretty costly and you get them from PLI but as someone who started out with an apprenticeship and a 6 month course in patent application drafting, they have come to be invaluable tools.
 
Good Luck,
 
-Jeff Travis
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