Kurt G. Briscoe, a Member of the law firm of Norris McLaughlin, P.A., was selected as one of the presenters to give ex parte oral arguments in an appeal he is currently prosecuting for an appeal advocacy program. The Patent Trial and Appeal Board (PTAB), an administrative tribunal within the United States Patent and Trademark Office (USPTO), will present a recording of Kurt’s argument for its free “Inside PTAB: An Educational Webinar” program.

About the PTAB Webinar

“Inside PTAB” is an educational webinar designed to give students and intellectual property practitioners a glimpse into the workings of the PTAB. Participants will have the opportunity to view the ex parte appeal proceeding and an AIA trial proceeding. Other discussion topics include an overview of the Board and effective written and oral advocacy before the PTAB. Chief Judge Scott Boalick will deliver introductory remarks, while Vice Chief Judge Janet Gongola will deliver closing remarks.

When: Thursday, August 26, 2021

11:00 a.m. – 4:00 p.m.

About Kurt Briscoe

Kurt devotes his practice to patent, trademark, and other intellectual property matters. He has over 25 years of experience in intellectual property law, including five years, from 1983 to 1988, as an examiner in the USPTO. Most of Kurt’s practice, including his experience as a patent examiner, has been in the field of pharmaceuticals and biotechnology.

Kurt regularly represents domestic and international companies in connection with the preparation and prosecution of patent and trademark applications. Additionally, he regularly negotiates licensing and nondisclosure agreements for these clients. Kurt 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.

In addition to the pharmaceuticals and biotechnology industries, Kurt has extensive experience in the chemical, medical and dental device, and adhesive technology industries. He is also experienced in trade secret law. Kurt assists clients in drafting and reviewing legal agreements related to unpatented products, inventions, processes, and other forms of proprietary information.

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Kurt G. Briscoe, a Member of law firm Norris McLaughlin, P.A., volunteered to judge the 25th Annual Yale Invitational, hosted by the Yale Mock Trial Association, November 14-15.

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. At issue was a civil case of battery and negligence.

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.

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By: Kurt G. Briscoe
NM Thinking About Patents
April 2013

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By: Kurt G. Briscoe
Yorktown Bar Association
May 25, 2011

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And Interview with Kurt G. Briscoe and Jeanne Hambureg
The Metropolitan Corporate Counsel
June 2004

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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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