The USPTO has released an updated report on Inter Partes Review (IPR) and Post Grant Review (PGR) proceedings involving Orange Book or biologic patents, taking into account data through March 31, 2023. Highlights of the...more
In a bulletin issued July 24, 2022, focused on Director Review of Patent Trial and Appeal Board (PTAB) decisions in AIA trials, the USPTO also announced the creation of “a new Appeals Review Panel (ARP), which may be convened...more
Senators Chris Coons and Thom Tillis recently introduced the bipartisan 2023 Patent Eligibility Restoration Act that would make significant changes to U.S. patent eligibility law. The “Findings” section of the Act states that...more
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
In UCB Inc. v. Actavis Laboratories UT Inc., the Federal Circuit affirmed the district court’s judgement of invalidity on obviousness grounds but reversed the finding of anticipation. In reaching its decision on anticipation,...more
The Supreme Court decided not to grant certiorari in Teva Pharms. USA, Inc. v. GlaxoSmithKline, LLC, which has come to be known as the “skinny label” case. That means the Federal Circuit’s August 2021 decision (which was a...more
On April 26, 2023, Senator Elizabeth Warren and Congresswoman Pramila Jayapal sent a letter to USPTO Director Kathi Vidal complaining about the USPTO’s failure “to address the pharmaceutical industry’s abuse of the patent...more
The USPTO has commenced the fee-setting process for fee adjustments it expects to implement in January 2025. While many fee changes are modest (~5%), the USPTO proposes significant increases to design patent fees and PTAB...more
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