tag:blogger.com,1999:blog-6733236595417664807.post244313868335864126..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: Does the BPAI require a definition from the time of filing?Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger6125tag:blogger.com,1999:blog-6733236595417664807.post-39136251734610133612012-10-09T18:48:35.850-04:002012-10-09T18:48:35.850-04:00Two comments:
1. Re: word meanings don't chang...Two comments:<br />1. Re: word meanings don't change. In general, word meanings don't change. But, I'd think in patent law, where we are drafting about new technologies, many words may not have established meanings or are being used in new ways more than in newspapers and such. So be careful with that one.<br />2. Re: "you gotta put something down on the record in order to even get a patent to litigate." Perhaps, but then you might as well put it in the claim.<br />Chrisnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-83502819041429582272012-10-09T17:05:38.070-04:002012-10-09T17:05:38.070-04:00I don't see much inconsistency in the cases th...I don't see much inconsistency in the cases that are cited. If the claim term is a word such as "smooth" or "above," the date doesn't matter a lot because the definitions have not changed much over the centuries, nor are they expected to. If the claim term is a term of art and a technical dictionary needs to be consulted, dates matter. A young word in, say, database systems, IC manufacture, or Internet commerce can change quite a bit over time (e.g., ten years, or less).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-78289017816126963902012-10-09T16:40:55.225-04:002012-10-09T16:40:55.225-04:00>such a definition [provided by
>Applicant]...>such a definition [provided by <br />>Applicant] may be considered <br />>intrinsic evidence <br /><br />Good point. And I do appreciate that an Applicant may not want to pin himself down to a definition during prosecution. <br /><br />But I feel like some Applicants are too hesitant to make substantive arguments during prosecution out of a generalized fear of file wrapper estoppel. <br /><br />The way I see it, sometimes you gotta put something down on the record in order to even get a patent to litigate. Karen G. Hazzahhttps://www.blogger.com/profile/14864564225463528630noreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-66654118599779396972012-10-09T16:35:21.723-04:002012-10-09T16:35:21.723-04:00Even if the BPAI does not accept that definition, ...Even if the BPAI does not accept that definition, you can bet that during claim construction in a subsequent lititgation, in view of the Philips case, such definition may be considered intrinsic evidence that will be given greater deference than a definition proferred during the litigation itself. Due to prosecution history estoppel, this could work for or against the patent owner.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-80645787582694452172012-10-09T15:18:18.692-04:002012-10-09T15:18:18.692-04:00BPAI -- "do as I say, not as I do." The...BPAI -- "do as I say, not as I do." They are a bunch of hypocrites. They'll admit dictionary definitions when it suits their purpose (to affirm) and they'll refuse to enter them when it doesn't.<br /><br />That being said, I recommend that a smart patent attorneys opens up their Bluebook and find the correct citation form for a dictionary and use it. Also, I suggest using McGraw Hill's Dictionary of Scientific and Technical Terms. The Federal Circuit uses that dictionary all the time, so the BPAI cannot disparage its use.<br /><br />"I doubt that many dictionary definitions change much in that period. So this seems like a reasonable presumption."<br />It is a reasonable presumption – so long as it suits the BPAI's (now PTAB's) purpose.<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-33587471799485268512012-10-09T11:04:24.315-04:002012-10-09T11:04:24.315-04:00Karen, the PTAB didn't exist until 2012. Your...Karen, the PTAB didn't exist until 2012. Your link to the Nike opinion has an incorrect date.Anonymousnoreply@blogger.com