Intellectual Property Firm Neglects Duty To File Claims On Time


Expert Patent ExaminerThis case involves a biopharmaceutical company that hired a law firm to create an intellectual property strategy for them as they moved their product into relevant markets around the globe. Specifically, the law firm was asked to obtain patent protection for the company’s biological fertilizer seed coat. It was alleged that the law firm claimed non-essential limitations that unnecessarily required an agriculturally acceptable adjuvant or excipient when such was not needed to practice the invention. It was also alleged that the firm failed to file claims by given deadlines. The company asserted that if the law firm had not claimed non-essential limitations and had filed claims in a timely fashion, the product would have been commercialized and licensed throughout two continents.

Question(s) For Expert Witness

  • 1. Please describe your experience handling patents for biologics and similar technology.
  • 2. What standards exist to ensure that all limitations claimed on the patent are essential for the practice of the invention?

Expert Witness Response E-313764

I have both a biological science and legal background and I have 30 years of experience prosecuting patent applications globally relating to biological, biochemical, and chemical inventions. I am particularly sensitive to avoiding the addition of unnecessary limitations because my firm also litigates patent cases before trial judges, juries, and the Court of Appeals. When we prosecute patent applications, we are always concerned about avoiding limitations that can be easily circumvented by potential infringes.

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