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Session 2'3: Trust

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Julian Crump CPA EPA. Mintz Levin Cohn Ferris Glovsky and Popeo Intellectual Property, LLP ... Fact: A partnership between applicants (and their representatives) ... – PowerPoint PPT presentation

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Title: Session 2'3: Trust


1
Session 2.3 Trust Faith
  • Julian Crump CPA EPA
  • Mintz Levin Cohn Ferris Glovsky and Popeo
    Intellectual Property, LLP

2
Quality What is it?
  • Quality Application
  • Quality Examination
  • Fact A partnership between applicants (and
    their representatives) and patent offices

3
A High Quality Application ...
  • Clearly and concisely
  • Discloses the Invention(s)
  • Defines the Invention(s)
  • Question What is the Invention? Is there a
    philosophical difference between systems? Is it
    the words used or the thing described?

4
A Poor Quality Application Is ...
  • Prolix
  • Unclear
  • Speculative
  • Non-committal

5
High Quality Examination is ...
  • Timely
  • Applies the law established by policy and
    developed judicially
  • Consistent/predictable
  • For applicants
  • Third parties
  • Practical (encourages high quality drafting)
  • Question Where is the appropriate balance
    between the needs of applicants and the public
    interest? Have we got it right?

6
Poor Quality Examination Is ...
  • Inconsistent
  • Untimely
  • Inflexible
  • Unpractical
  • Fact Poor quality examination encourages
    poor quality drafting and bad applicant
    behaviour

7
Key Issues
  • Clarity/Conciseness
  • Consistency
  • Timeliness
  • Reasonable stance re added matter and same
    invention for priority purposes
  • The Big Picture (trans-national effects)
  • Question Is the priority to facilitate the
    acquisition of patents affording fair protection
    for inventions or to protect third parties?

8
Example Poor Quality Application
  • CLAIMS
  • 1. A method of treating or preventing a disease
    or disorder mediated by a X1 receptor comprising
    administering to a patient suffering from said
    disease or disorder a composition comprising a
    therapeutically effective amount of a ligand for
    said receptor or a prodrug thereof.

9
Example Poor Quality Examination
  • 1. A corkscrew from removing a cork from a
    bottle, the corkscrew comprising a cork-engaging
    member having a worm for entering the cork, a
    support member for engaging the neck of the
    bottle and lever means connected to said members
    for applying a mechanical advantage therebetween
    to facilitate removal of the cork from the
    bottle.
  • 2. lever means comprises at least one two
    levers.

10
Example Poor Quality Examination
  • Example
  • A wing corkscrew having two levers and a
    metal ring with a Teflon insert for engaging the
    neck of the bottle. The cork-engaging member
    comprises a rack and the lever means comprise two
    levers, each lever having a pinion in engagement
    with said rack.

11
Example Poor Quality Examination
  • Prior Art
  • Amendment
  • 1. A corkscrew for removing a cork from a
    bottle, the corkscrew comprising a cork-engaging
    member having a worm for entering the cork, a
    support member for engaging the neck of the
    bottle and lever means connected to said members
    for applying a mechanical advantage therebetween
    to facilitate removal of the cork from the
    bottle characterised in that the cork-engaging
    member comprises a rack and the lever means
    comprise at least one lever, the or each lever
    having a pinion in engagement with said rack.

12
Example Poor Quality Examination
  • Deficiencies
  • Priority (at least one vs. two levers.
  • Added matter (omission of ring)
  • Not fair protection

13
Thank you for your attention
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