News & Analysis as of

Patents Priority Patent Claims

Pillsbury Winthrop Shaw Pittman LLP

Preclusion Confusion: Federal Circuit Decision in ZyXEL Communications v. UNM Rainforest Sparks Uncertainty at the PTAB

In ZyXEL, the petitioner unexpectedly received a second chance to argue against the patentability of the patentee’s substitute claims, even though the U.S. Patent Trial & Appeal Board (PTAB) had already found those claims...more

AEON Law

Patent Poetry: Federal Court Dismisses Patent Claims for Aircraft Fault Detection

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A federal district court in Utah has dismissed patent claims directed to intermittent fault detection (IFD) technology for electrical systems in aircrafts. The court determined that the asserted claims are patent-ineligible...more

Sheppard Mullin Richter & Hampton LLP

PTAB Rulings Shed Light On Quantum Computing Patents

Quantum computing, a field that harnesses quantum physical phenomena such as superposition and entanglement to perform complex computational tasks, is an emerging technology area. The uncertainties regarding the feasibility...more

Mintz - Intellectual Property Viewpoints

Do Patent Claims to Methods of Treatment Cover In Vivo Transformations?

Where an alleged infringer administers a substance A to a subject, and the substance is subsequently transformed to a therapeutic agent X inside the subject’s body, does the administration of the substance A constitute an act...more

Akin Gump Strauss Hauer & Feld LLP

District Court Precludes Experienced Patent Attorney from Testifying as Expert Based on Lack of Pertinent Technical Expertise

A district court recently precluded a patent attorney from testifying as an expert in a patent infringement lawsuit where the proposed expert lacked the requisite technical expertise to assist the trier of fact in...more

WilmerHale

Recent Appellate Decision Overturns Revocations of Broad Institute CRISPR-Cas9 Patents

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This past Thursday, the Board of Appeals of the European Patent Office released the minutes of oral proceedings in which the Board rendered a decision in closely watched appeals relating to Broad patents directed to...more

AEON Law

Patent Poetry: Federal Circuit Affirms PTAB Based on “Ordinary Meaning”

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The Federal Circuit has affirmed two decisions of the Patent Trial and Appeal Board (PTAB or Board) that upheld some claims of a patent owned by Personal Genomics Taiwan, Inc. (PGI) and invalidated other claims. Pacific...more

Foley & Lardner LLP

USPTO Says Prior Art Date of AIA Patents is Not Limited By Dynamic Drinkware

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When Dynamic Drinkware was decided in 2015, commentators debated whether differences in the language of the American Invents Act (AIA) version of 35 USC § 102 would shield AIA patents from its restrictions. Now, U.S. Patent...more

Fish & Richardson

EPO Enlarged Board of Appeal Raises Bar for Challenging Priority Claims at the EPO

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Challenges to the validity of the “Patent Cooperation Treaty joint applicant” have been a problem for many applicants at the European Patent Office. On October 10, 2023, the EPO’s highest authority, the Enlarged Board of...more

Goodwin

Some Much-Needed (Applicant-Friendly) Clarification on Priority Claims at the European Patent Office

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On October 10, 2023, the Enlarged Board of Appeal of the European Patent Office (EPO) issued a consolidated decision in cases G1/22 and G2/22 clarifying a common issue regarding the validity of a priority claim made at the...more

MoFo Life Sciences

Retaining Your Patent Priority Date In Europe: Formal Priority Given A Rebuttable Presumption In Favor Of Applicant/Patentee

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On October 10, 2023, the Enlarged Board of Appeal of the European Patent Office (EPO) issued a groundbreaking decision that reflects a major change in how formal priority is assessed at the EPO during examination and in...more

American Conference Institute (ACI)

[Event] 21st Annual Life Sciences IP Summit - September 27th - 28th, Munich, Germany

Hosted by C5 Group, the 21st Annual Life Sciences IP Summit returns for another exciting year with curated programming with speakers from the pharma, biotech and medical device industries that will provide practical insights...more

Fitch, Even, Tabin & Flannery LLP

Supreme Court Rules That Patent Must Enable “Full Scope” of Genus Claims

On May 18, the U.S. Supreme Court in Amgen Inc. v. Sanofi unanimously affirmed the Federal Circuit’s finding that Amgen’s patent claims to cholesterol-lowering antibodies were not enabled under 35 U.S.C. § 112. The Court...more

AEON Law

Patent Poetry: Federal Circuit: Particle Patent Claims Anticipated

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The Federal Circuit has held that the claims of a “SNALP” patent were inherently anticipated by prior art. In Arbutus Biopharma Corp. v. ModernaTX, Inc., Arbutus appealed a decision in an inter partes proceeding by the Patent...more

American Conference Institute (ACI)

[Event] C5’s 16th Annual Forum on Pharma & Biotech Patent Litigation in Europe - May 23rd - 24th, Amsterdam, Netherlands

Hosted by C5, the 16th Annual Forum on Pharma & Biotech Patent Litigation in Europe returns 23-24 May, at the DoubleTree by Hilton Amsterdam Central Station, Amsterdam with curated programing for you to gain the knowledge and...more

McDermott Will & Emery

[Ongoing Program] PTAB Session: Strategic Considerations Before Filing IPR Petitions - April 21st, 10:00 am - 11:00 am JST

We are committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we are continuing our free monthly webinar series, McDermott IP Focus. During...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Finds RFID Tagging Claims Patentable Under 35 U.S.C § 101

On December 16, in Adasa Inc. v. Avery Dennison Corporation, the Federal Circuit upheld patentability of claims reciting an RFID transponder with storage for a particular type of serial number—affirming the district court’s...more

AEON Law

Patent Poetry: Definitions in Patent Incorporated by Reference Don’t Invalidate Patent

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The Federal Circuit has ruled that the definition of a claim term in a patent incorporated by reference into the patent at issue doesn’t limit the claims in the patent at issue. In Finjan LLC v. ESET, LLC, Finjan sued...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Affirms ITC Ruling Finding Patents Not Essential to LTE Standard

In INVT SPE LLC v. ITC, the Federal Circuit affirmed an International Trade Commission (ITC) decision that held INVT’s patent claims were not essential to the LTE cellular communications standard. According to the court, INVT...more

Stikeman Elliott LLP

Patent Rules Amendments In Force as of October 3, 2022, Reflecting Canada’s Commitments Under CUSMA

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On October 3, 2022, the majority of the amendments introduced by the Rules Amending the Patent Rules on June 2, 2022, came into force and effect. The amendments aim to streamline the patent examination process and bring...more

McDermott Will & Emery

PTO Requests Comments on Initiatives to Ensure Patent Robustness, Reliability

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The US Patent & Trademark Office (PTO) is seeking public input and guidance on proposed initiatives directed at bolstering the robustness and reliability of patents. The request for comments was spurred in part by US...more

TransPerfect Legal

Leveraging the Patent Priority Date: A Life Sciences Focus

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The ACC last month hosted the San Francisco Bay Area Life Sciences CLE Conference, giving TransPerfect Legal Solutions (TLS) team members the opportunity to learn and connect with colleagues. One of the panels, moderated by...more

McDermott Will & Emery

Arthrex, Still Without Director Review, Gets Constitutional Review from Patent Commissioner

A panel of the US Court of Appeals for the Federal Circuit considered whether the Patent Commissioner, on assuming the role of the US Patent & Trademark Office (PTO) Director, can constitutionally evaluate the rehearing of...more

MoFo Life Sciences

Stepping Stones To Success: Supporting Claims In The Life Sciences

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The standard for written description in the life sciences seems to have tightened lately, leading patent applicants to wonder what level of written support and working example data is necessary to support genus claims....more

Linda Liu & Partners

Influence on Scope of Protection by Defining Steps in Process Claims of Chinese Patent

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According to the Guidelines for Patent Examination, a process claim shall usually be defined in terms of technical features such as technological process, operational conditions, steps, and procedures. However, the Guidelines...more

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