“problem Juno The attitude toward patent practice in general is Juno If you require disclosure of typical shapes or properties, you can ultimately ignore the predictability in the art and apply it broadly regardless of the predictability in the art. “
Federal Circuit Decision Juno V. Kite It undermines effective prosecution practices and ultimately undermines patent enforcement.of Juno The Panel held that to satisfy the written description requirement, a patent must demonstrate to a person skilled in the art that the inventor possesses and discloses in the application the full scope of all claimed genera. I judged. By refusing to review the Federal Circuit’s 2021 decision on the extent of the written explanation requirement, Juno V. Kite Again, courts consider nothing from the prosecutor’s perspective.
this is the reason Juno V. Kite Bad for patent examination practice.
Reason 1: Juno The panel’s reasoning exacerbates the long-established billing practice of capturing the broadest reasonable range in the first presentation.
If you’ve interviewed inventors before filing an application, you’ll quickly discover that inventors tend to focus on specific and unique details of the problem that led to their final invention. Inventors do not consider exclusive rights or how a system, method, or apparatus is made, used, or sold. When they come up with their inventions, they don’t come up with all the different or alternative ways that their competitors can easily achieve the same goal. They do not envision how different parties could perform different parts, components, or steps without a single party literally infringing all elements of the claim. It is up to the drafting patent attorney, and most examiners, to draft claims with these issues in mind, especially when the claims are first submitted, in order to provide meaningful protection for the inventor’s invention. It is prohibited to expand the scope of
For example, consider the use of functional language, which is often required for device claims. Examiners often overdo the use of functional language, such as applicant’s “made up of,” and always give patentable weight to positive structural descriptions that enable functionality. I notice that. But the prosecutor’s claims about features aren’t because we enjoy them. Certain parts or structures can be manufactured or sold separately, so prosecutors argue through function. We do our best to avoid positively claiming elements that can be manufactured or performed by different parties. This is a question that inventors do not think about when they think of inventions, Juno The panel ignores the breadth of what a typical inventor could come up with and what a meaningful claim would require.
Reason 2: Juno’s Increased requirements for written explanations increase uncertainty during testing and client counseling
When clients approach patent attorneys on the issue of infringement or non-infringement of a competitor’s patent, it has long been the practice to render an opinion under literal infringement and the doctrine of equivalents. If a claim recites a “means of fastening” and discloses only a screw as an embodiment, we usually tell the client that making a bolt or clip is not sufficient to avoid the doctrine of equivalents.
here we come Juno, argued that “showing the complete coverage of all genera means conveying the characteristics that enable the antibody variable elements to bind to specific target antigens.” Disclosure of exemplary amino acid sequences or geometries of antibody variable elements was sought. Applying Junod’s reasoning to the “fastening means” example, it is unclear whether “fastening means” should be limited to screws alone, since it is the only embodiment disclosed. If your application is reviewed, Juno Based on jurisprudence, examiners can interpret terms under the broadest reasonable interpretation in applying the prior art and limit applicants to merely claim screw. Junowritten description requirement.
problem Juno The attitude toward patent practice in general is Juno Any request for disclosure of such exemplary shapes or characteristics may ultimately disregard the predictability in the art and be broadly applicable regardless of the predictability in the art. This happens whenever decisions on biologics are applied to the examination of non-biopharmaceutical claims. This happens during the examination without any clear impediment. Even more problematic is the jury’s disregard for the predictability of art in its decisions.
The panel basically ignored Juno’s expert opinion, which attests to the predictability of art. Experts testified that two exemplary scFvs are representative. [scFvs] do all the same. They bind antigens. Experts also testify that scFv have “known structural commonalities and similarities” and that “scFv are composed of a variable region derived from the light chain of an antibody and a variable region derived from the heavy chain of an antibody. have the same general and common structure consisting of An antibody in which these two parts are connected by a linker. Instead, the panel’s conclusion was that the art field in question was of an unpredictable nature, and that expert opinion on predictability was simply “too general.”
Extensive range of decisions such as Juno Rarely interpreted with the facts of the particular case issued in mind, now we’re all waiting for the fallout.
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Author: K3 Star
