News & Analysis as of

Patents Patent Term Adjustment Patent Applications

Neal, Gerber & Eisenberg LLP

Federal Circuit Weighs in Again on Obviousness-Type Double Patenting to Limit In re Cellect and Preserve PTA for First-Filed,...

Obviousness-type double patenting (ODP), a judicially-created ground of patent invalidity, has become the subject of intense interest after the Federal Circuit issued two decisions refining the application of the doctrine in...more

Cooley LLP

Federal Circuit Limits In re Cellect, Preserving PTA for First-Filed, First-Issued Patents Within a Family

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On August 13, 2024, the US Court of Appeals for the Federal Circuit held in Allergan v. MSN that “a first-filed, first-issued, later-expiring claim” cannot be invalidated for obviousness-type double patenting (ODP) “by a...more

Foley Hoag LLP

Patent Term Adjustment and ODP: USPTO Defends Federal Circuit's Cellect Decision

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In December 2021, patent practice was upended by four related United States Patent and Trademark Office (USPTO) Patent Trial & Appeal Board (PTAB) decisions holding that patents subject to statutory Patent Term Adjustment...more

Foley & Lardner LLP

Federal Circuit Preserves PTA For Patent Family Patriarch

Foley & Lardner LLP on

In its most recent decision addressing the complicated interplay between Patent Term Adjustment (PTA) and obviousness-type double patenting (OTDP), the Federal Circuit ruled that a first-filed, first-issued parent patent...more

Kilpatrick

First-filed, Later-Expiring Patent Protected from Obviousness-Type Double Patenting Post In re Cellect

Kilpatrick on

The recent In re Cellect decision by the Federal Circuit1 is significant for patent owners who have obtained patent-term adjusted patents in the same patent family. The court held that term-adjusted patents can be potentially...more

Troutman Pepper

EDVA Upholds USPTO’s Calculation of Patent Term Adjustment

Troutman Pepper on

Under the patent laws, the term of a patent may be increased for delays by the U.S. Patent and Trademark Office (USPTO) during the application process. See 35 U.S.C. § 154(b)(1). Conversely, the USPTO can reduce a patent term...more

Sunstein LLP

The USPTO Giveth and Taketh Away

Sunstein LLP on

According to statute, if prosecution of a patent application is delayed due to the fault of the United States Patent and Trademark Office (“USPTO”), additional term is added to the life of the patent when it issues. This is...more

Mintz - Intellectual Property Viewpoints

Practical Guidelines for Avoiding Patent Term Adjustment Penalty

The duty to disclose required by 37 CFR § 1.56 is a constant weight on patent practitioners and applicants to cite references via an Information Disclosure Statement (IDS). The indiscriminate or reflexive filing of an IDS...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

McDonnell Boehnen Hulbert & Berghoff LLP

Living with Cellect – Three Best Practices

On Friday, January 19, 2024, the Court of Appeals for the Federal Circuit issued an Order refusing to rehear In re Cellect, LLC en banc. This likely means that the holding in In re Cellect will represent the law regarding...more

Wolf, Greenfield & Sacks, P.C.

Wolf Greenfield Attorneys Preview What’s Ahead in 2024

2024 is upon us and it’s going to be another busy year for intellectual property law. In this episode of IP Talk with Wolf Greenfield, you’ll hear Wolf Greenfield attorneys from a variety of practice areas offering their...more

Linda Liu & Partners

Noteworthy Points in the Rules for the Implementation of China’s Patent Law 2023

Linda Liu & Partners on

Recently, the new Rules for the Implementation of Patent Law (hereinafter referred to as "the Rules") has been approved and promulgated by the State Council, and will come into force on January 20, 2024. There are many...more

Venable LLP

[Ongoing Program] Life Sciences Series - Current Trends in ANDA Litigation - October 31st, 1:00 pm - 2:00 pm ET

Venable LLP on

We are excited to announce Venable’s inaugural Life Sciences Webinar Series. This month-long series will explore the intricacies and latest developments that shape the life sciences industry. Join us as we hear from our...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...

BakerHostetler on

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Mind Your Ps and Qs, and Your PTAs Too

Last week, the Federal Circuit held that obviousness-type double patenting trumps patent term adjustment, opening the door for invalidity attacks that to date had been questionable. In re Cellect was an appeal from a...more

Smart & Biggar

Proposed legislation for patent term adjustment, and the interplay with CSPs

Smart & Biggar on

Bill C-47, “An Act to implement certain provisions of the budget tabled in Parliament on March 28, 2023,” aka “Budget Implementation Act, 2023, No. 1” is an omnibus bill that includes proposed amendments to the Patent Act to...more

Smart & Biggar

A first look at Canada’s proposed patent term adjustment system

Smart & Biggar on

Bill C-47, entitled “An Act to implement certain provisions of the budget tabled in Parliament on March 28, 2023,” had its first reading in the House of Commons on April 20, 2023. This omnibus bill includes proposed...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

Proskauer - Life Sciences

Is an Appeal Time Well-Spent? For Patents, That Depends . . .

In Sawstop Holding LLC v. Vidal the Federal Circuit confirmed what many practitioners suspected— the Patent and Trademark Office will only award a patent term adjustment to offset a delay caused by appellate review of a...more

McDonnell Boehnen Hulbert & Berghoff LLP

SawStop Holding LLC v. Vidal (Fed. Cir. 2022)

Earlier this month, the Federal Circuit affirmed the grant of summary judgment in favor of the U.S. Patent and Trademark Office by the U.S. District Court for the Eastern District of Virginia, finding that the USPTO did not...more

Knobbe Martens

Patent Term Adjustment Under 35 U.S.C. 154(b)(1)(C)(iii) Requires Reversal of Adverse Determination of Patentability

Knobbe Martens on

Summary: When a patent claim is subject to adverse determinations of patentability first before the PTO and again after appeal, the claim is not entitled to patent term adjustment for the period of the appeal even if the...more

Troutman Pepper

The USPTO May Be Miscalculating Patent Term Adjustments

Troutman Pepper on

The U.S. Patent and Trademark Office released a final rule on June 16, 2020, to revise how it calculates patent term adjustment. But the USPTO’s PTA algorithm does not yet fully account for its final rule. Originally...more

Troutman Pepper

Patent Term Adjustment PTO Calculation Does Not Fully Reflect 2020 Rule Change

Troutman Pepper on

The U.S. Patent and Trademark Office (USPTO) released a final rule on June 16, 2020, revising how it will calculate Patent Term Adjustment (PTA). However, the USPTO's PTA algorithm does not yet (as of March 2022) fully...more

Smart & Biggar

New year, new patent rules for excess claim fees and continued examination in Canada

Smart & Biggar on

Consider requesting examination of your Canadian patent applications now to avoid potential fees - Last summer, the Government of Canada issued draft regulations introducing claim fees and a continued examination scheme for...more

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