Replies to post #120908 on Biotech Values

[investorgold2002]

USPTO

interesting to see USPTO has this on it's main page
USPTO Studying Therasense v. Becton, Dickinson Decision to Assess Impacts on Agency Practice and Procedures; Expects to Issue Further Guidance to Applicants Soon

Washington – Today the United States Patent and Trademark Office (USPTO) announced that it is carefully studying the important en banc decision by the U.S. Court of Appeals for the Federal Circuit in the case of Therasense v. Becton, Dickinson to assess how it may impact agency practices and procedures. The agency also announced that it expects to soon issue guidance to applicants related to the prior art and information they must disclose to the Office in view of Therasense.

“We are now studying the potential impact of Therasense v. Becton, Dickinson on Office practice, and we expect to soon issue guidance to applicants regarding the materials they must submit to the Office under their duty of disclosure,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.

The Therasense decision concerns the standards for inequitable conduct, including the materiality and intent prongs. The Court’s decision resolves uncertainties in many aspects of how district courts must apply the inequitable conduct doctrine. It also directly affects applicant behavior in front of the USPTO and, in particular, their disclosure of information relevant to the patentability of their inventions.

http://www.uspto.gov/news/pr/2011/11-36.jsp

[investorgold2002]

Case

below looked eerily similar to sandoz case...we should look at this case in detail. patentdocs has extensive analysis of this and other patent cases...worth looking


"Prior to submitting this argument, however, counsel before the European Patent Office had submitted a response, supported by the same expert's declaration, in the European counterpart of the '382 patent that was directly contradictory to the arguments presented to the U.S. Examiner during prosecution of the '551 patent. Before the EPO, the expert attested and the European attorney argued that the membrane was not necessary to control permeability, an argument used to distinguish over another prior art reference that disclosed a test strip having a membrane."