The Use of Prosecution History of Foreign Counterpart Patents to Make In-Depth Analysis of Thai Patents
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Abstract
Patent prosecution is a procedure in which a patent is sought through the interaction between the examiner and the applicant in the course of the process starting from submission of a patent application and ending with decisions of the patent office, which may be a rejection or an approval of the application. The information recorded from filing to rejecting or granting is crucial to the faith of a patent or an application – in a rejection, the applicant can utilize the information for petition of disagreement, and in an approval, the patentee can use said information to enforce the patent, whereas the competitors can make use of it to invalidate the patent. All the information from the commencement to the end of prosecution, especially the communication between the applicant and the examiner is stored in a file called in some jurisdictions such as the United States as prosecution history – an important source for the patentee to protect her patent and the competitors to secure public interest. The recording of patent information in the United States is very comprehensive, whereas, said information recorded in Thailand lacks the details to provide guidelines to each patent sought to be studied; consequently, the use of prosecution history or file wrapper from foreign countries such as the United States to learn about the background of Thai patents asserting to have foreign counterpart patents will be useful to make in-depth analysis of the Thai patents said to have such foreign counterpart patents. The research leading to this article, therefore, studied the gist of prosecution history as well as related aspects together with Thai patents with foreign counterpart patents in order to point out the usefulness of prosecution history or file wrapper from foreign counterpart patents to interested parties including courts in the analysis of Thai patents.
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References
Bradley, Curtis A. “Territorial Intellectual Property Rights in an Age of Globalism.” Virginia Journal of International 37, no. 2 (1997): 505-586.
Chan, Eric. “Asserting Foreign Patent Claims in Us Federal Courts: What’s Left after Voda V. Cordis.” Albany Law Journal of Science and Technology 18, no. 1 (2008): 101-151.
DeCluitt, Christopher D. “International Patent Prosecution, Litigation and Enforcement.” Tulsa Journal of Comparative and International Law 5, no. 1 (1997): 135-168.
Department of Infellectual Property. Manual on Examination of Utility Patent and Petty Patent Edition B.E. 2562. Bangkok: Department of Infellectual Property, 2019.
Garner, Bryan A. Black’s Law Dictionary. 8th ed. St. Paul, MN: Thomson West, 2004.
Gordon, Lori. “2018 Patent Law Decisions of the Federal Circuit.” American University Law Review 68, no. 4 (2018): 1263-1371.
Hellfeld, Axel von. “Patent Infringement in Europe: The British and German Approaches to Claim Construction or Purposive Construction Versus Equivalency.” European Intellectual Property Review 30, no. 9 (2008): 364-370.
Holbrook, Timothy R. “Should Foreign Patent Law Matter.” Campbell Law Review 34, no. 3 (2011): 581-606.
Kazhdan, Daniel, and Molly R. Silfen. “Inventors Beware: The Danger of Getting Too Many Patents.” Santa Clara Law Review 60, no. 2 (2020): 289-323.
Kerns, Andrew S. “Fight or Flight: Traversing the Extraterritorial Battlefield of Modern United States Patent Law.” Baylor Law Review 63, (2011): 462-497.
Kuanpoth, Jakkrit. Patent Rights in Pharmaceuticals in Developing Countries: Major Challenges for the Future. Cheltenham, UK: Edward Elgar, 2010.
Lachman, Leon, Herbert A. Lieberman, and Joseph L. Kanig. The Theory and Practice of Industrial Pharmacy. Philadelphia: Lea & Febiger, 1986.
Lieberman, Herbert A., Leon Lachman, and Joseph B. Schwartz, eds. Schwartzpharmaceutical Dosage Forms: Tablets. Vol. 1. New York: Marcel Dekker, 1980.
Lieberman, Herbert A., Leon Lachman, and Joseph B. Schwartz, eds. Schwartzpharmaceutical Dosage Forms: Tablets. Vol. 1. New York: Marcel Dekker, 1989.
Menell, Peter S., Matthew D. Powers and Steven C. Carlson. “Patent Claim Construction: A Modern Synthesis and Structured Framework.” Berkeley Technology Law Journal 25, no. 2 (2010): 711-829.
Miller, Richard, Guy Burkill, His Honour Judge Birss, and Douglas Campbell. Terrell on the Law of Patent. 19th ed. United State: Sweet & Maxwell, 2021.
Robins, Kendra. “Extraterritorial Patent Enforcement and Multinational Patent Litigation: Proposed Guidelines for Us Courts.” Virginia Law Review 93, no. 5 (2007): 1259-1314.
Rosas, Roberto. “Foreign Patent Decisions and Harmonization: A View of the Presumption against Giving Foreign Patent Decisions Preclusive Effect in United States Proceedings in Light of Patent Law International Harmonization.” John Marshall Review of Intellectual Property Law 18, no. 1 (2018): 777-780.
Sohn, Joshua L. “Reassessing the Role of Trial in Patent Litigation.” Federal Circuit Bar Journal 27, no. 2 (2017): 187-212.