Session 2'3: Trust

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Session 2.3 Trust Faith

• Julian Crump CPA EPA
• Mintz Levin Cohn Ferris Glovsky and Popeo
  Intellectual Property, LLP

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Quality What is it?

• Quality Application
• Quality Examination
• Fact A partnership between applicants (and
  their representatives) and patent offices

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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?

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A Poor Quality Application Is ...

• Prolix
• Unclear
• Speculative
• Non-committal

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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?

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Poor Quality Examination Is ...

• Inconsistent
• Untimely
• Inflexible
• Unpractical
• Fact Poor quality examination encourages
  poor quality drafting and bad applicant
  behaviour

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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?

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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.

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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.

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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.

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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.

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Example Poor Quality Examination

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

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Thank you for your attention