• Nov 20, 2020Norris McLaughlin IP Attorneys Volunteer to Judge Higher Education Moot Courts

    Kurt G. Briscoe, a Member of law firm Norris McLaughlin, P.A., and James R. Major, D.Phil., an Associate of the firm, each recently participated in virtual moot courts for separate universities.

    About the Higher Education Moot Courts

    “It is always my pleasure to give back to the higher education community. To see the bright minds of our younger generation is truly inspiring,” said Briscoe, who volunteered to judge the 25th Annual Yale Invitational, hosted by the Yale Mock Trial Association, November 14-15. At issue was a civil case of battery and negligence.

    Major was a judge for the 10th Annual University of Missouri Patent Law Moot Court Competition on November 17. He commented, “I was happy to be a part of this exciting event, as I admire the host, Dennis Crouch, who is a well-respected patent law academic and the owner of Patently-O. At issue was patentable subject matter, which has recently become a challenging and controversial topic. The event went exceptionally well and the students were outstanding. It was a nice reminder of why I enjoy what I do and decided on this career path in the first place.”

    About Kurt Briscoe

    Briscoe devotes his practice to patent, trademark, and other intellectual property matters. He has over 35 years of experience in intellectual property law, including five years, from 1983 to 1988, as an examiner in the United States Patent and Trademark Office. Most of Briscoe’s practice, including his experience as a patent examiner, has been in the field of pharmaceuticals and biotechnology.

    Briscoe regularly represents domestic and international companies in connection with the preparation and prosecution of patent and trademark applications, and regularly negotiates licensing and nondisclosure agreements for these clients. Briscoe provides experienced worldwide IP portfolio management, including strategic, freedom-to-operate, invalidity, and infringement opinions. He also performs due diligence for clients prior to their acquisition of patents and trademarks to reveal any patent validity or enforceability problems, or patent prosecution events that impact patent claim scope.

    Briscoe is also experienced in trade secret law. He assists clients in drafting and reviewing legal agreements related to unpatented products, inventions, processes, and other forms of proprietary information. In addition to pharmaceuticals and biotechnology, he has extensive experience in the chemical, medical and dental device, and adhesive technology industries. Briscoe received his J.D. from University of Maryland School of Law in 1986 and his B.S. from University of Maryland in 1982.

    About James Major

    Major dedicates his practice to U.S. and foreign copyright, patent, and trademark matters. His doctorate in immunology and virology and over ten years’ legal experience enable him to understand the patentability of new technologies, as well as the science and data required to secure and expand patent protection in light of new statutory subject matter requirements. Major is highly experienced in rendering patentability, landscape, non‑infringement, and invalidity opinions, particularly in the field of biologics. He also has patent and trademark litigation experience.

    Major is exceptionally qualified in patent prosecution matters relating to small molecules, nucleic acids, proteins, antibodies, chemical processes, formulations, industrial processes, beverages, genetically-modified plants, and methods of treatment. He has also published on patent and cannabis-related matters. Major assists players in the emerging cannabis industry in the evaluation and securing of patents.

    Major received his J.D., magna cum laude, in 2011 from New York Law School, where he was on the Dean’s List, and was a candidate for the Trustees’ Prize for the highest average in the Evening Division. He was also Staff Editor of the New York Law School Law Review, a John Marshall Harlan Scholar, and a member of the Institute for Information Law and Policy. Major received his Doctorate of Philosophy from the University of Oxford in 2003 and his B.A. in Natural Sciences from the University of Cambridge in 1996.

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    By: Kurt G. Briscoe
    July 2002

    On May 28, 2002, the United States Supreme Court in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (hereinafter “the Supreme Court’s Festo decision”) handed down a very significant decision clarifying the application of the doctrine of equivalents. The doctrine of equivalents is an extremely important doctrine of United States patent law, which in certain cases extends the scope of the protection afforded by a patent claim beyond its literal wording.

    The Supreme Court’s Festo decision upheld the Federal Circuit’s holding that extended the doctrine of prosecution history estoppel to include any narrowing amendment made for “a reason substantially related to patentability.” Under the doctrine of prosecution history estoppel, the range of equivalents accorded to a patent claim cannot be so broad as to cover subject matter “surrendered” by the patentee during prosecution. Historically, subject matter has been considered “surrendered” only in response to prior art rejections.

    The Supreme Court, however, reversed the Federal Circuit’s holding that a finding of prosecution history estoppel acts as a “complete bar” to the application of the doctrine of equivalents as to any patent claim element that has been narrowed. If a “complete bar” applied, then no range of equivalents would have been available for any claim element narrowed. The Supreme Court maintained the “flexible bar” approach as to narrowed claim elements, but conditioned its application upon a showing by the patentee that the allegedly equivalent element could not have been literally embraced by the appropriate choice of claim language during patent prosecution. This showing is likely to constitute a difficult burden for the patentee to discharge.

    In view of these developments in the law, we recommend that prior art searches be conducted prior to the filing of a patent application, and that original patent application claims be drafted in view of the prior art uncovered, to reduce the need for narrowing amendments to be made during patent prosecution. Further, if a narrowing amendment must be made, a determination should be made as to what subject matter might be considered to be surrendered by the amendment so that the potential scope of protection under the doctrine of equivalents can be ascertained.

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