Many times arguments that are made\u00a0during oral argument do not get any mention in the decisions of the Federal Circuit.\u00a0\u00a0As a result,\u00a0they can fly under the radar of the patent bar for quite some time until the argument is ultimately repeated and\u00a0mentioned by the Federal Circuit in an opinion or even relied upon. \u00a0<\/p>\n
In listening to the recording of the oral argument In\u00a0Univ. of Pittsburgh of the Commonwealth System of Higher Ed. v. Hedrick<\/a>, there was one such argument that caught my attention.\u00a0 Appellant argued that perhaps the strongest evidence in a dispute over inventorship was the fact that the inventors of\u00a0two provisional applications had included method claims in the\u00a0two provisional applications but had not included any claims directed to a composition of matter.\u00a0\u00a0 The appellant argued that due to the omission of such claims in the two provisional applications that the inventors listed on the provisionals were admitting that they were not inventors of such a composition of matter as of the filing\u00a0date of the provisionals. [Listen<\/a>]<\/p>\n I think\u00a0such an argument\u00a0would be alarming to most patent prosecutors.\u00a0 There is very little case law concerning the effect of provisional applications.\u00a0 It’s been my experience that most practitioners write at least one claim in a provisional application but do not write complete claim sets.\u00a0 In fact, many would argue that no claim is required for a provisional\u00a0 that will serve as the priority document for a US non-provisional application. (Although, it seems prudent to include at least one claim — especially for future\u00a0foreign filing purposes.)\u00a0 So, to hear someone argue that one must essentially \u00a0include a full claim set in a provisional application is disconcerting.\u00a0 As noted above, the Federal Circuit panel did not address the argument in its decision.<\/p>\n","protected":false},"excerpt":{"rendered":" Many times arguments that are made\u00a0during oral argument do not get any mention in the decisions of the Federal Circuit.\u00a0\u00a0As a result,\u00a0they can fly under the radar of the patent bar for quite some time until the argument is ultimately repeated and\u00a0mentioned by the Federal Circuit in an opinion or even relied upon. \u00a0 In […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/269"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=269"}],"version-history":[{"count":21,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/269\/revisions"}],"predecessor-version":[{"id":308,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/269\/revisions\/308"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=269"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=269"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=269"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}