News & Analysis as of

Patent Term Adjustment United States Patent and Trademark Office Patent Terms

Ballard Spahr LLP

In re Cellect Poses an Obvious Dilemma

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In August 2023, the Federal Circuit in In re Cellect held that in evaluating unpatentability for obviousness-type double patenting (ODP) of a patent that has received patent term adjustment (PTA), the relevant date is the...more

Dunlap Bennett & Ludwig PLLC

Extending The Life Of Your Patent

The United States Patent and Trademark Office (USPTO) has just issued a Notice of Allowance for your invention embodied in the Utility Patent Application (UPA) you filed years ago. Your initial reaction may be, ‘Finally! The...more

BakerHostetler

Are Your Granted Patents in Danger of a Post-Grant Double Patenting Challenge? Time To Update Your Playbook in the Wake of In re...

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Here’s a familiar scenario. An applicant files a first patent application with medium-to-narrow claim coverage. The first patent application issues with some or substantial patent term adjustment (PTA) caused by one or more...more

American Conference Institute (ACI)

[Webinar] 3rd Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA - October 10th - 26th, 1:00 pm EST

Gain a comprehensive understanding of Hatch-Waxman and BPCIA essentials, a critical competency for legal and business professionals in the biopharmaceutical arena. Attend ACI’s Hatch-Waxman and BPCIA Proficiency Series...more

McDermott Will & Emery

The End Is Not So Near: Patent Term Adjustments Count in Obviousness-Type Double Patenting Determinations

Addressing for the first time how patent term adjustments (PTAs) interact with obviousness-type double patenting (ODP), the US Court of Appeals for the Federal Circuit concluded that when members of a patent family have...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2023

In re Cellect, LLC, Appeal Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023) In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit...more

Procopio, Cory, Hargreaves & Savitch LLP

Clarifying the Interplay of Patent Term Adjustment and Obviousness-Type Double Patenting: In Re Cellect

Patent practitioners of all stripes should take heed of the recent decision by the U.S. Federal Circuit in In re Cellect. The decision has direct implications for strategies in patent portfolio management, patent prosecution,...more

Foley & Lardner LLP

Don't Miss Out On Patent Term -- Use The USPTO IDS PTA Safe Harbor Form

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Effective July 17, 2023, the USPTO will "require" Information Disclosure Statement (IDS) Patent Term Adjustment (PTA) safe harbor statements to be made on a specific USPTO form and electronically filed under a specific...more

Venable LLP

Federal Circuit Panel Hears Oral Arguments in In re Cellect, LLC to determine the Fate of Patent Term Adjustments

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On June 9, 2023, the Federal Circuit—presided over by Judges Lourie, Dyk, and Reyna—held oral arguments in In re Cellect, LLC. The case that many clients, especially the biotechnology and pharmaceutical companies, have been...more

McDermott Will & Emery

Another Kind of Term Limit: Delay Resulting from After-Allowance Amendments Deducted from PTA

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed the US Patent & Trademark Office’s (PTO) decision on a patent term adjustment (PTA), finding that it was appropriate to deduct days from a patent term when the...more

Fish & Richardson

An Overview of Utility Patents in the United States

Fish & Richardson on

What is a utility patent? The definition of a utility patent is a patent that covers “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”...more

K&L Gates LLP

Don’t B Late; Federal Circuit Interprets the B Delay Calculation

K&L Gates LLP on

Mayo Foundation v. Iancu reads more like an arithmetic problem than a Federal Circuit decision. The reason is the case involves the Patent Term Adjustment Act (PTA) (see 35 U.S.C. § 154(b)). ...more

Alston & Bird

Patent Case Summaries

Alston & Bird on

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board....more

Foley & Lardner LLP

After-Final Response Does Not Stop PTA Clock

Foley & Lardner LLP on

In Intra-Cellular Therapies, Inc. v. Iancu, the Federal Circuit agreed with the USPTO’s Patent Term Adjustment (PTA) calculation that charged a deduction for “applicant delay” for time after the applicant filed a first...more

Knobbe Martens

Subsequent Examination After RCE and Interference Proceeding Are Not PTO Delay

Knobbe Martens on

MAYO FOUNDATION FOR MEDICAL EDUCATION AND RESEARCH v. ANDREI IANCU, UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE - Before: Newman, Lourie, and Dyk - ...more

Patterson Belknap Webb & Tyler LLP

In Mayo, Federal Circuit Seeks to Head Off Disputes Over When Claims Are “Deemed Allowable” by Counting Continued Examination Time...

Earlier this week, the Federal Circuit declined to further extend the patent term of an antibody patent held by the Mayo Foundation. In Mayo Foundation v. Iancu, the court held that the time spent on a request for continued...more

Nutter McClennen & Fish LLP

Patent Holders, Protect Your IP with These Tips on Patent Term Adjustment

The importance of patent term, or the period of time during which the exclusive nature of a patent is in effect, cannot be overstated. The patent term for an issued patent, which is currently set at 20 years from the filing...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Issues Notice on Impact of Federal Circuit's Supernus Decision on PTA Procedures

In January, the Federal Circuit determined in Supernus Pharmaceuticals, Inc. v. Iancu that the U.S. Patent and Trademark Office had erred in calculating the Patent Term Adjustment for Supernus' U.S. Patent No. 8,747,897.  In...more

McDermott Will & Emery

“Equal to” Means “Not Exceed” when Determining Patent Term Adjustment

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found that the US Patent and Trademark Office (PTO) erred in calculating a patent term adjustment (PTA) for a patent covering an oral osmotic form of an antihypertensive drug,...more

Faegre Drinker Biddle & Reath LLP

Some Patents Could Be Entitled to Later Expiration Dates Than Previously Thought

Your patent may be entitled to a later expiration date if the U.S. Patent and Trademark Office (USPTO) characterized time periods during which you could not engage in reasonable efforts to conclude prosecution as “applicant...more

Mintz - Intellectual Property Viewpoints

Patent Term Adjustment: The Real Meaning of Applicant Delay

On January 23, 2019, the Federal Circuit decided Supernus Pharmaceuticals, Inc. vs. Iancu and shed light on Patent Term Adjustment (PTA). PTA was established by the American Inventors Protection Act of 1999 and codified at 35...more

Jones Day

Supernus: Federal Circuit Provides Clarity on USPTO Discretion on Patent-Term Adjustment Calculations

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The Situation: The USPTO took a long time to issue Supernus's patent application. Although Supernus would otherwise have been entitled to significant patent term adjustment, the USPTO ruled that the accumulated term should be...more

Neal, Gerber & Eisenberg LLP

Client Alert: Federal Circuit PTA Decision Favors Applicants with Multiple Co-Pending Domestic and Foreign Applications

The Federal Circuit recently held that the USPTO’s calculation of “applicant delays” related to Patent Term Adjustment (PTA) is contrary to the plain language of the PTA Statute....more

Cozen O'Connor

Inconsistency Between the Patent Term Adjustment Statute and Its Regulations

Cozen O'Connor on

On January 23, 2019, the Federal Circuit in Supernus Pharmaceuticals, Inc. v. Iancu, reversed the Eastern District of Virginia’s grant of summary judgment that the USPTO’s calculation of the patent term adjustment for the...more

Morrison & Foerster LLP

Federal Circuit Corrects USPTO on Reasonable Efforts When Calculating Patent Term Adjustment

The Federal Circuit ruled on January 23, 2019, that the United States Patent and Trademark Office (“PTO”) erred in reducing the term of a patent owned by Supernus Pharmaceuticals by 546 days, during which time the company...more

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