The USPTO will transition from officially issuing patents in paper form to officially issuing patents electronically, starting April 18, 2023. In addition to saving paper, the USPTO predicts the change to electronically...more
It has been a while since the Federal Circuit weighed in on the patent eligibility of so-called “natural product” claims. While the finding of non-eligibility in ChromaDex, Inc. v. Elysium Health, Inc. is not surprising, it...more
It is hard to predict whether a given bill will gain traction, but when the Senate Judiciary Committee reports out five bipartisan bills targeting pharmaceutical patents and pricing, it seems likely they are determined to get...more
If you get to page 1060 of the Consolidated Appropriations Act of 2023, you will see the Unleashing American Innovators Act of 2022, which was enacted on December 29, 2022. Part of that law changed the formula for calculating...more
The USPTO has announced a further delay of the fee for patent applications that are not filed in DOCX format. Originally set to take effect January 1, 2022, and then delayed to January 1, 2023, the USPTO now has delayed the...more
The USPTO will be hosting a “public listening session” on January 19, 2023, focusing on USPTO-FDA collaboration initiatives proposed pursuant to President Biden's Executive Order on “Promoting Competition in the American...more
The USPTO has issued a Federal Register Notice soliciting comments on “proposed initiatives directed at bolstering the robustness and reliability of patents to incentivize and protect new and nonobvious inventions while...more
October marks the start of a new fiscal year for the USPTO. Last week the agency announced the extension of several pilot programs that will continue on into 2023 and beyond....more
In Sawstop Holding LLC v. Vidal, the Federal Circuit upheld the USPTO’s interpretation of the Patent Term Adjustment (PTA) statute that limits the availability of PTA for time spent appealing an Examiner’s rejection. The...more
The USPTO has issued a Federal Register Notice discussing how the duty of candor and good faith in dealing with the USPTO applies to “information and statements material to patentability … received from or submitted to the...more
The USPTO Patent Term Adjustment (PTA) rules include a “safe harbor” that avoids a PTA deduction for “Applicant delay” for Information Disclosure Statements that are accompanied by a certain statement averring that the items...more
The original Federal Circuit decision in Novartis Pharms. Corp. v. Accord Healthcare, Inc. was on the list of “written description” cases I covered in several conference programs this spring. It was interesting because...more
In University of Massachusetts v. L’Oréal S.A., the Federal Circuit reversed the district court’s claim construction that underlay its finding of indefiniteness, which was vacated. The district court’s claim construction had...more
After being closed for more than two years due to the Covid-19 pandemic, the USPTO has opened all locations to employees and resumed some public in-person events. That said, PTAB hearings and TTAB hearings are still being...more
Without naming names or technology, I wanted to share an interesting rationale for obviousness I came across recently. The rejection was an “obvious to try” type rejection, based on the assertion that it would have been...more
The USPTO first established a pro bono program to help “financially under-resourced inventors and small businesses” pursue patent protection for their inventions under the America Invents Act (AIA). The USPTO recently...more
The USPTO has issued proposed rules to make permanent a Covid-19-related change in the manner in which applications for patent term extension under 35 USC § 156 are to be filed. While the Covid-19-related changes permitted...more
In a Federal Register Notice published January 6, 2022, the USPTO announced a new pilot program that will permit certain applicants to temporarily defer responding to subject matter eligibility (“SME”) rejections. The program...more
In a Director’s Forum blog post published December 10, 2021, the USPTO announced plans to issue proposed rule changes relating to the format in which U.S. patents are issued, making electronic patents the norm, with something...more
The USPTO has announced changes to the “technical and scientific qualifications that may typically make applicants eligible” to take the patent bar exam. The changes are being implemented after consideration of public...more
In Eli Lilly and Co. v. Teva Pharmaceuticals International GmbH, the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board decision upholding Teva’s patents directed to specific methods of treatment using an...more
In Minerva Surgical, Inc. V. Hologic, Inc., the Supreme Court limited the equitable doctrine of assignor estoppel that prevents an assignor from subsequently challenging the validity of the patent he or she assigned. The...more
In an unusual Federal Register Notice, the USPTO “reminded” applicants that “patent applications must properly present examples in a manner that clearly distinguishes between prophetic examples that describe predicted...more
Under current USPTO Patent Term Adjustment (PTA) rules, an Applicant can be charged a Patent Term Adjustment (PTA) deduction for “applicant delay” before examination commences if the application is not “ready for examination”...more
As much of the United States is taking steps towards “getting back to normal,” the USPTO continues to implement programs to encourage investment and innovation in technologies addressing the COVID-19 pandemic. Recently, the...more