Nautilus Jan 13

8/13/2019 Nautilus Jan 13

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NAUTILUS: A NEW STANDARD FOR DEFINITE CLAIMING*

Harold C. Wegner**

I. OVERVIEW 2

II. PUBLIC POLICY: TWO SIDES OF THE COIN 3

III. AVOIDABLY (VS. INSOLUBLY) AMBIGUOUS CLAIMING 5

IV. CONCLUSION 6

APPENDIX:

THE LORD LOREBORN TEST FOR 112(B) INDEFINITENESS:

AN ALTERNATIVE TO INSOLUBLY AMBIGUOUS

_______________________

* This paper is a background paper for the Second Annual Naples Midwinter Patent Experts Conference,Naples, Florida, February 10-11, 2014, at the Naples Hilton. The paper considers the standard for claim

definiteness that is under review by the Supreme Court which on February 10, 2014, granted certiorari inNautilus, Inc. v. Biosig Instruments, Inc., Supreme Court No. 13-369. The appendix had been a separatepaper, published prior to the grant of certiorari.This paper represents the personal views of the author and does not necessarily reflect the views of anycolleague, organization or client thereof.

This paper: January 12, 2014.

This paper was written without prior consultation with Philip Warrick, one of the participants at theNaples Conference (who is involved in theNautilus case) or the Hon. Roger Hughes (author of a decisioncited in this paper).

** Foley & Lardner LLP, Washington, D.C. Biographical information is found on the last page of theAppendix.


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Wegner,Nautilus: A New Standard for Definite Claiming

2

I. OVERVIEW

InNautilus, Inc. v. Biosig Instruments, Inc., Supreme Court No. 13-369,

opinion below, Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 900 (Fed.

Cir. 2013)(Wallach, J.), petitioner reawakens the ghost of United Carbon Co. v.

Binney & Smith Co., 317 U.S. 228 (1942), the last major Supreme Court case

where claims were invalidated for indefiniteness under what today is 35 USC

112(b).

Under the Federal Circuit case law even a claim deliberately drafted with

ambiguities to cloud the true scope of protection is saved from invalidity unless the

claim is insolubly ambiguous. Petitioner asks the Supreme Court in the first

Question Presented:

Does the Federal Circuits acceptance of ambiguous patent claims with multiple

reasonable interpretationsso long as the ambiguity is not insolubleby a courtdefeat the statutory requirement of particular and distinct patent claiming?

It is likely that the Supreme Court will reverse the Federal Circuit inNautilus.

Thats the easy part. Then, the harder points. What standardif anyshould be

set for determining claim particularity? What test will the Federal Circuit create for

claim particularity within the ambit of whatever guidance is given by the Supreme

Court?

The starting point is a recognition that there are two competing elements.

First, the system must permit a certain claiming latitude to inventors, given the

difficulties of language to precisely define the scope of technological innovation.

Second, of course, there is the need for clear boundaries of protection to foster

competition and encourage future innovation. See III,Public Policy: Two Sides

of the Coin.


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The Federal Circuit has developed a unique test for determining whether the

patentee has provided claims with sufficient particularity: If there is an ambiguity

in the claim the threshold of invalidity is reached only if the claim is insolubly

ambiguous. To the contrary, under Commonwealth case law dating back nearly

one full century and as manifested in Canadian opinions, there is a much lower

threshold: Claims are invalidated where they are avoidablyambiguous. See

III, Avoidably (versus Insolubly) Ambiguous Claiming

II. PUBLIC POLICY: TWO SIDES OF THE COIN

There are manifestly two sides to the coin, both important. On the one hand,

it remains important for the judicial system to encourage innovation by providing

relatively certain patent protection for the inventor freeas much as possible

from arcane rules and procedural obstacles to sustain such patent rights. The

Court inExxon Researchjustifies its obviously pro-patentee bias by the statement

that [b]y finding claims indefinite only if reasonable efforts at claim construction

prove futile, we accord respect to the statutory presumption of patent validity,see

N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1579 (Fed. Cir. 1993),

andwe protect the inventive contribution of patentees, even when the drafting of

their patents has been less than ideal.Exxon Research & Eng'g Co. v. United

States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)(emphasis added).The other side of the coin is seen from nineteenth century case law that

focuses on the need for clear claim boundaries to fosterfurther innovation.


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The current standard for patent claims under what is now 35 USC 112(b)

can be traced to the second half of the nineteenth century. Then, the United States

developed a mandatory system of patent claims to define the metes and bounds of

protection.

The policy considerationsand the need to point out clear boundaries of

protection through such claimswas pointed out inMerrill v. Yeomans,a

contemporaneous opinion of the Supreme Court that explains this evolution of the

law:

The growth of the patent system in the last quarter of a century in this country has

reached a stage in its progress where the variety and magnitude of the interests

involved require accuracy, precision, and care in the preparation of all the papers

on which the patent is founded. It is no longer a scarcely recognized principle,

struggling for a foothold, but it is an organized system, with well-settled rules,

supporting itself at once by its utility, and by the wealth which it creates and

commands. The developed and improved condition of the patent law, and of the

principles which govern the exclusive rights conferred by it, leave no excuse for

ambiguous language or vague descriptions. The public should not be deprived of

rights supposed to belong to it, without being clearly told what it is that limits these

rights. The genius of the inventor, constantly making improvements in existing

patents, a process which gives to the patent system its greatest value,should

not be restrained by vague and indefinite descriptions of claims in existing patents

from the salutary and necessary right of improving on that which has already been

invented. It seems to us that nothing can be more just and fair, both to the patentee

and to the public, than that the former should understand, and correctly describe,

just what he has invented, and for what he claims a patent.

Merrillv. Yeomans, 94 (4 Otto) U.S. 568, 573-74 (1877).
https://www.lexis.com/research/buttonTFLink?_m=6a1b00a67bcdc2e82253bfd6915f972d&_xfercite=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b517%20U.S.%20370%5d%5d%3e%3c%2fcite%3e&_butType=3&_butStat=2&_butNum=169&_butInline=1&_butinfo=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b94%20U.S.%20568%2c%20573%5d%5d%3e%3c%2fcite%3e&_fmtstr=FULL&docnum=1&_startdoc=1&wchp=dGLbVzB-zSkAz&_md5=4e50832a3634d7571cf19262e3bc1301https://www.lexis.com/research/buttonTFLink?_m=6a1b00a67bcdc2e82253bfd6915f972d&_xfercite=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b517%20U.S.%20370%5d%5d%3e%3c%2fcite%3e&_butType=3&_butStat=2&_butNum=169&_butInline=1&_butinfo=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b94%20U.S.%20568%2c%20573%5d%5d%3e%3c%2fcite%3e&_fmtstr=FULL&docnum=1&_startdoc=1&wchp=dGLbVzB-zSkAz&_md5=4e50832a3634d7571cf19262e3bc1301https://www.lexis.com/research/buttonTFLink?_m=6a1b00a67bcdc2e82253bfd6915f972d&_xfercite=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b517%20U.S.%20370%5d%5d%3e%3c%2fcite%3e&_butType=3&_butStat=2&_butNum=169&_butInline=1&_butinfo=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b94%20U.S.%20568%2c%20573%5d%5d%3e%3c%2fcite%3e&_fmtstr=FULL&docnum=1&_startdoc=1&wchp=dGLbVzB-zSkAz&_md5=4e50832a3634d7571cf19262e3bc1301https://www.lexis.com/research/buttonTFLink?_m=6a1b00a67bcdc2e82253bfd6915f972d&_xfercite=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b517%20U.S.%20370%5d%5d%3e%3c%2fcite%3e&_butType=3&_butStat=2&_butNum=169&_butInline=1&_butinfo=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b94%20U.S.%20568%2c%20573%5d%5d%3e%3c%2fcite%3e&_fmtstr=FULL&docnum=1&_startdoc=1&wchp=dGLbVzB-zSkAz&_md5=4e50832a3634d7571cf19262e3bc1301https://www.lexis.com/research/buttonTFLink?_m=6a1b00a67bcdc2e82253bfd6915f972d&_xfercite=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b517%20U.S.%20370%5d%5d%3e%3c%2fcite%3e&_butType=3&_butStat=2&_butNum=169&_butInline=1&_butinfo=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b94%20U.S.%20568%2c%20573%5d%5d%3e%3c%2fcite%3e&_fmtstr=FULL&docnum=1&_startdoc=1&wchp=dGLbVzB-zSkAz&_md5=4e50832a3634d7571cf19262e3bc1301


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III. AVOIDABLY (VERSUS INSOLUBLY) AMBIGUOUS CLAIMING

The two sides to the public policy debate are also recognized in the

Commonwealth countries. The Commonwealth countries have recognized both

the need for clear claim boundaries to foster competition and future research while

also honoring the rights of the inventor to gain reasonable protection where it is

difficult or impossible to draft claims with the most precise boundaries.

Whereas the Federal Circuit will invalidate a claim for violation of the

definiteness requirement of 35 USC 112(b) only if the claim is insolubly

ambiguous, the Commonwealth will invalidate a claim under a lower barwhere

the claim is avoidably ambiguous. Pfizer Canada Inc. v. Canada (Minister of

Health), [2005] F.C.J. No. 2155 (Federal Court of Canada 2005)(Hughes,

J.)(quotingNatural Colour Kinematograph Company Limited v Bioschemes

Limited(1915) 32 RPC 256, 266 (1915)(Loreborn, J.)).

The avoidably ambiguoustest has three elements as explained by Judge

Hughes in the citedPfizer Canada case:

[1] [L]anguage whichis avoidably obscure or ambiguous [invalidates the claim]

whether the defect be due to design, or to carelessness or to want of skill.

[2] Where the invention is difficult to explain, due allowance will, of course, be

made, for any resulting difficulty in the language.

[3] But nothing can excuse the use of ambiguous language when simple language

can easily be employed, and the only safe way is for the patentee to do his best tobe clear and intelligible."

(emphasis added; rephrased as shown in brackets and reformatted with paragraph

numbers added).


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The Canadian (Commonwealth) approach is explained in greater detail in

the Appendix, an earlier paper entitled The Lord Loreborn Test For 112(b)

Indefiniteness: An Alternative to Insolubly Ambiguous

IV. CONCLUSION

To the extent that the Court overturns the insolublyambiguous test of the

Federal Circuit, it is important that a balanced test is created that protects the

inventor from the difficulties of claim language. Consideration should be given to

the approach taken by Judge Hughes in Canada that invalidates a claim for the

lower bar of being avoidablyambiguous.


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THE LORD LOREBORN TEST FOR 112(b) INDEFINITENESS:

AN ALTERNATIVE TO INSOLUBLY AMBIGUOUS*

Harold C. Wegner

[1] [L]anguage whichis avoidably obscure or ambiguous [invalidates theclaim] whether the defect be due to design, or to carelessness or to want of skill.

[2] Where the invention is difficult to explain, due allowance will, of course, be

made, for any resulting difficulty in the language.

[3] But nothing can excuse the use of ambiguous language when simplelanguage can easily be employed, and the only safe way is for the patentee to do

his best to be clear and intelligible."Lord Loreborn (1915)**

I. OVERVIEW 2

II. CLASHING ANALYTICAL METRICS FOR CLAIM ANALYSIS 4

III. THREE PART AVOIDABLE AMBIGUITY TEST 7

IV. INSOLUBLY AMBIGUOUS TEST INVITES GAMESMANSHIP 8

V. CONCLUSION 10

About the Author 11

*This version: UnitedCarbonDec4.pdf December 30, 2013.

**Pfizer Canada Inc. v. Canada (Minister of Health), [2005] F.C.J. No. 2155 (Federal Court of Canada

2005)(Hughes, J.)(quotingNatural Colour Kinematograph Company Limited v Bioschemes Limited(1915) 32 RPC

256, 266 (1915)(Loreborn, J.))(emphasis added; rephrased as shown in brackets and reformatted with paragraph

numbers added).


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APPENDIX: Wegner, TheLord LorebornTest

2

I. OVERVIEW

Judge Roger Hughes quotation of the Lord Loreborn test for claim

indefiniteness is only one of the more recent opinions to restate a nearly century

old standard in Commonwealth countries to determine when a claim is invalid as

indefinite. Without benefit of a test of this nature, the United States struggles to

determine when a claim should be thrown out as indefinite; fuzzy boundaries

encourage sloppy claim drafting to the detriment of the patent community.

Instead, the Federal Circuit sanctions clearly ambiguous language as long as theambiguity is not insoluble.

The Supreme Court has not directly addressed claim ambiguity in the sense

of fatal indefiniteness for the more than seventy years since of United Carbon Co.

v. Binney & Smith Co., 317 U.S. 228 (1942). It is inevitable that at some point in

the not too distant future the Court will grant certiorari to focus upon whether the

Federal Circuit test should remain the law. The only question about grant of

certiorari is when this will happen. The next opportunity for the Court to grant

review is Friday, January 10th, at its Conference when a vote may be expected as

to whether to grant review inNautilus, Inc. v. Biosig Instruments, Inc., Supreme

Court No. 13-369, opinion below, Biosig Instruments, Inc. v. Nautilus, Inc., 715

F.3d 891, 900 (Fed. Cir. 2013)(Wallach, J.), where Petitioner asks whether the

Federal Circuits acceptance of ambiguous patent claims with multiple reasonable

interpretationsso long as the ambiguity is not insoluble by a courtdefeat the

statutory requirement of particular and distinct patent claiming?


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The United States has two different lines of case law for the interpretation of

patent claims with respect to indefiniteness under 35 USC 112(b). The Supreme

Court has a zone of uncertainty test while the Federal Circuit is seemingly more

forgiving of patentee draftsmanship mistakes by concluding that claims are fatally

indefinite only if insolubly ambiguous. See II, Clashing Analytical Metrics for

Claim Analysis.

Only one court has cited with approval the middle ground solution of nearly

a full century ago inNatural Colour Kinematograph that asks whether claimlanguage is avoidablyobscure or ambiguous.Natural Colour Kinematograph

Company, 32 RPC at 266: It is no excuse that the drafting error was due to

carelessness or to want of skill; the test was relied upon in an early Ninth Circuit

opinion. Id. See III, The Three Part Test of Lord Loreborn.

A further difficulty with the insolubly ambiguous test for invalidity is that

patentees are encouraged to draft claims that come just short of meeting that

standard, yet which are unnecessarily vague and indefinite to the detriment of

competitors. See IV, Insolubly Ambiguous Test Invites Gamesmanship.


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II. CLASHING ANALYTICAL METRICS FOR CLAIM ANALYSIS

The United States currently has two different lines of case law to determine

whether a claim is fatally indefinite under what is now 35 USC 112(b). On the

one hand, there is the United Carbon line of case law that focuses upon the zone

of uncertainty created by ambiguities in the claim language, whereas the Federal

Circuit follows theDatamize test as to whether a claim is insolubly ambiguous.

United Carbon, supra;Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,

1347 (Fed. Cir. 2005).

A. The Supreme Court Zone of Uncertainty Test

The Supreme Court in United Carbon set forth a zone of uncertainty test

for determining whether a claim is fatally indefinite:

[T]helimits of a patent must be known for the protection of the patentee, the

encouragement of the inventive genius of others and the assurance that the subjectof the patent will be dedicated ultimately to the public.[General Elec. Co.v.Wabash Appliance Corp., 304 U.S. 364, 369 (1938).] Otherwise, a zone of

uncertaintywhich enterprise and experimentation may enter only at the risk ofinfringement claims would discourage invention only a little less than unequivocal

foreclosure of the field,United Carbon Co.v.Binney & Smith Co., 317 U.S. 228,236 (1942), and the public [would] be deprived of rights supposed to belong to it,

without being clearly told what it is that limits these rights.Merrillv. Yeomans, 94U.S. (4 Otto) 568, 573 (1877).Markman v. Westview Instruments, 517 U.S. 370,

390 (1996)(dictum)(emphasis added).

The quoted passage from United Carbon is from a longer statement:


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The statutory requirement of particularity and distinctness in claims is met only

when they clearly distinguish what is claimed from what went before in the art andclearly circumscribe what is foreclosed from future enterprise. A zone of

uncertainty which enterprise and experimentation may enter only at the risk ofinfringement claims would discourage invention only a little less than unequivocal

foreclosure of the field. Moreover, the claims must be reasonably clear-cut to

enable courts to determine whether novelty and invention are genuine. * * * While

we do not find it necessary to consider questions of novelty and invention, in theview we take of the claims in suit, a mere reading of prior art patents shows how, if

they are read with the liberality and inclusiveness claimed for those in suit, theydescribe products, if not identical, at least of confusing similarity. Whether the

vagueness of the claim has its source in the language employed or in the somewhat

indeterminate character of the advance claimed to have been made in the art is notmaterial. An invention must be capable of accurate definition, and it must beaccurately defined, to be patentable. Cf.General Electric Co. v. Wabash [Appliance

Corp., 304 U.S. 364, 372-73 (1938)] United Carbon, 317 U.S. at 236-37(footnote omitted).

B. The More Liberal Federal Circuit Approach

The Federal Circuit sustains or denies ambiguous claims under a test

expressed inDatamize: A claim is indefinite only when it is not amenable to

construction or insolubly ambiguous. Star Scientific, Inc. v. R.J. Reynolds

Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008)(quotingDatamize, LLC v.

Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)).

The insolubly ambiguous test was recently explained in Teva v. Sandoz:


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To prove indefiniteness [under the Federal Circuit insolubly ambiguous test],

an accused infringer must demonstrate by clear and convincing evidence that oneskilled in the relevant art could not discern the boundaries of the claim based on

the claim language, the specification, the prosecution history, and the knowledge inthe relevant art.

Teva Pharms. USA, Inc. v. Sandoz, Inc.,723 F.3d 1363, 1367 (Fed. Cir.2013)(Moore, J.)(quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,1366 (Fed. Cir. 2011)).

As noted in the opinion of the Federal Circuit in theNautilis case now at the

Supreme Court, a claim may pass 112(b) muster even where its scope is notplain on [its] face, the task to resolve the scope is formidable and requires

some experimentation andwhere in the end reasonable persons will disagree:

[W]e have not insisted that claims be plain on their face in order to avoid a

determination of invalidity for indefiniteness. Exxon [Research & Eng'g Co. v.

United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)]. If the meaning of the claim

is discernible, even though the task may be formidable and the conclusion may be

one over which reasonable persons will disagree, we have held the claimsufficiently clear to avoid invalidity on indefiniteness grounds.Id. In addition,

** * the fact that some experimentation may be necessary to determine the scope

of the claims does not render the claims indefinite.Id. at 1379.

Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 901-02 (Fed. Cir.

2013)(Wallach, J.)


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III. THE THREE PART TEST OF LORD LOREBORN

The noted Canadian jurist, Roger Hughes, points to [t]hebedevilling of the

law by the ghosts of the[ ] earlier, pre-claim, cases [which] is evident in the cri de

coeurof Lord Loreburn inNatural Colour Kinematograph Co. Ltd. v. Bioschemes

Ltd, (1915) 32 R.P.C. 256, 266 (H.L.) where he speaks of counsel shaping and re-

shaping a claim with references to the specification and other evidence[.]Pfizer

Canada Inc. v. Canada (Minister of Health),[2005] F.C.J. No. 2155 (Federal

Court of Canada 2005)(Hughes, J.).

In essence, Lord Loreborn sets forth a three part test to determine whether a

claim is fatally ambiguous:

It is the duty of patentee to state clearly and distinctly, either in direct words or by

clear and distinct reference, the nature and limits of what he claims.

[1] If [the patentee] uses language which, when fairly read, is avoidably

obscure or ambiguous, the Patent is invalid[.]

[2] [The conclusion of invalidity is reached] whether the defect be due todesign,

or to carelessness or to want of skill.

[3] Where the invention is difficult to explain, due allowance will, of course, bemade for any resulting difficulty in the language. But nothing can excuse the use of

ambiguous language when simple language can easily be employed, and the onlysafe way is for the patentee to do his best to be clear and intelligible.

Pfizer Canada v. Canada (quoting inNatural Colour Kinematograph, 32 R.P.C. at

266 (numbering and paragraphing added)).


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Judge Hughes is far from a voice crying in the patent wilderness. Several

jurists have recited the test of Lord Loreborn. Imperial Chemical Industries v.

Montedison (UK) Ltd, [1995] RPC 449 (Court of Appeal 1995)(UK)(Stuart-Smith,

J.); Wake Forest University Health Sciences v. Smith & Nephew Pty Ltd, 92 I.P.R.

496, 822 (Federal Court of Australia 2011)(Dodds-Streeton, J.).

As pointed out by the Ninth Circuit in Otis Elevator, [i]t is [the]

delimitation of the extent of the monopoly which is the function of the modern

claim.Avoidable ambiguityin the delimitation may, under the modern Englishcases, invalidate the entire patent. Otis Elevator Co. v. Pacific Finance Corp., 68

F.2d 664, 667 (9th Cir. 1934)(citingNatural Colour Kinematograph)(emphasis

added).

IV. INSOLUBLY AMBIGUOUS TEST INVITES GAMESMANSHIP

The insolubly ambiguous test encourages gamesmanship in claim drafting

where patentees are able to gain claims that would be invalid under the Lord

Loreborn test but which can be figured out with difficulty and thus be sustained

because they are not insolubly ambiguous. The routine use even today of

means-defined elements in claims where there is only vague support for such

elements in the specification is a major example: What other reason does a

patentee have to employ a means-defined element in his claims.


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It is one thing to give a pass to the patentee who has difficulty drafting

claims where the invention is difficult to explain as noted by Lord Loreburn.

But it is entirely a different situation where the patentee is able to craft clear claims

but chooses instead to game the system:

* * * I think this Patent is bad from ambiguity in the Specification. There seems tobe some danger of the well known rule of law against ambiguity being in practice

invaded. Some of those who draft Specifications and Claims are apt to treat thisindustry as a trial of skill, in which the object is to make the Claim very wide upon

one interpretation of it, in order to prevent as many people as possible from

competing with the patentee's business and then to rely upon carefully preparedsentences in the Specification which, it is hoped, will be just enough to limit theClaim within safe dimensions if it is attacked in Court. This leads to litigation as to

the construction of Specifications, which could generally be avoided if at the outseta sincere attempt were made to state exactly what was meant in plain language.

The fear of a costly law suit is apt to deter any but wealthy competitors fromcontesting a Patent. This is all wrong. It is an abuse which a Court can prevent,

whether a charge of ambiguity is or is not raised on the Pleadings, because itaffects the public by practically enlarging the monopoly, and does so by a kind of

pressure which is very objectionable. * * *

I cannot see what purpose there could have been using the roundabout languagehere employed, which has provoked so much argumentative subtlety and taken up

so much time, unless the object was to hold in reserve a variety of constructions foruse if the Patent should be called in question, and in the meantime to frighten off

those who might be disposed to challenge the Patent.

Pfizer Canada v. Canada (quoting inNatural Colour Kinematograph, 32 R.P.C. at

266)(emphasis added).


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V. CONCLUSION

Given that it has been more than seventy years since United Carbon, grant

of certiorari inNautilis v. Biosig is very far from a certain thing. What is clear,

however, is that at some point in the coming years the Court will revisit United

Carbon if the insolubly ambiguous test goes forth, unabated.

To the extent that certiorari is denied inNautilis v. Biosig this will give the

Federal Circuit additional time to work out a better solution than the extreme testof whether a claim is insolubly ambiguous before dropping the invalidity

hammer.


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About the Author:

HAROLD C WEGNER is apartner in the international law

firm of Foley & Lardner LLP

where he focuses upon strategic

counseling and patent appellateand opinion practice.

Prof. Wegner is the former

Director of the Intellectual

Property Law Program andProfessor of Law at the George

Washington University Law

School.

His involvement with otheracademic institutions has

included service as a VisitingProfessor at Tokyo University

and as an adjunct professor atthe Georgetown University Law

Center.

Prof. Wegners patent careercommenced with service at the

U.S. Department of Commerce

as a Patent Examiner. He spent

three years as aWissenschaftliche Mitarbeiterat

the Max-Planck-Institut frGeistiges Eigentum in Munich,

and thereafter was aKenshuin atthe Kyoto University Law

Faculty.

Prof. Wegner holds degreesfrom Northwestern University

(B.A.) and the Georgetown

University Law Center (J.D.).

This paper represents the

personal opinions of the authorwhich do not necessarily reflect

the views of any colleague,

organization or client thereof.

hwegner@foley.


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