Current written description jurisprudence can make it difficult to obtain broad antibody patents, leading practitioners to explore alternative claiming strategies in an effort to bypass the limited scope afforded under the...more
Rumor has it that one of many behind-the-scenes changes being implemented at the USPTO relates to how (or when) continuing applications are taken up for examination. Typically, an examiner may give priority to a continuing...more
Before the USPTO was subject to a hiring freeze, it assumed it would onboard 400 new examiners between fiscal year 2025 and fiscal year 2026, and still predicted an increase in the backlog of unexamined patent applications....more
The USPTO has published its final rule setting patent fees that will take effect January 19, 2025. The final rule steps back from some of the new fee structures proposed in April 2024, but still could have a significant...more
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
The U.S. Patent and Trademark Office’s (USPTO’s) proposed rulemaking that focuses on “fee adjustments” for 2025 includes a trap for the unwary related to Information Disclosure Statements (IDSs) that could complicate...more
For the first time in nearly 15 years, the U.S. Patent and Trademark Office (USPTO) has issued “Updated Guidance for Making a Proper Determination of Obviousness” under the U.S. Supreme Court’s ruling in KSR Int’l Co. v....more
4/23/2024
/ America Invents Act ,
Decision-Making Process ,
Ex Partes Reexamination ,
Graham Factors ,
Guidance Update ,
Inventions ,
New Guidance ,
Obviousness ,
Patent Applications ,
Patent Examinations ,
Prior Art ,
USPTO
If the U.S. Patent and Trademark Office (USPTO) is going to implement fee changes in January 2025, we should see a Federal Register Notice detailing the proposed fees soon. The USPTO started this round of fee-setting in April...more
2/20/2024
/ Filing Fees ,
Information Disclosure Statement ,
Inventors ,
Notice of Proposed Rulemaking (NOPR) ,
Patent Applications ,
Patent Public Advisory Committee (PPAC) ,
Patent Term Adjustment ,
Patent Term Extensions ,
Priority Patent Claims ,
Proposed Legislation ,
Request for Continued Examination ,
Small Business ,
Terminal Disclaimer ,
USPTO
The Supreme Court recently declined to review Personalized Media Communications, LLC v. Apple Inc., where a divided panel of the Federal Circuit upheld the district court’s finding that a PMC patent is unenforceable due to...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
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
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
While I stand by my view that the doctrine of obviousness-type double patenting is one of the most complicated aspects of U.S. patent law, regulations governing the ability to claim “Small Entity” status and pay reduced USPTO...more
The doctrine of obviousness-type double patenting is one of the most complicated and most confounding aspects of U.S. patent law. Although a Terminal Disclaimer can overcome most obviousness-type double patenting rejections,...more
The USPTO has published proposed guidelines on the types of courses and activities that will qualify for USPTO CLE credit, which practitioners may voluntarily report in the mandatory biennial registration statements that will...more
In an effort to both promote innovation against COVID-19 and promote dissemination of information about innovation against COVID-19, the USPTO is launching a new “deferred fee” pilot program for certain provisional patent...more
9/18/2020
/ Certifications ,
Coronavirus/COVID-19 ,
Emergency Use Authorization (EUA) ,
Federal Register ,
Food and Drug Administration (FDA) ,
Investigational Device Exemptions ,
Investigational New Drug Application (IND) ,
Patent Applications ,
Patent-Eligible Subject Matter ,
Pilot Programs ,
Premarket Approval Applications ,
USPTO
In Dana-Farber Cancer Institute, Inc. v. Ono Pharm. Co., Ltd., the Federal Circuit agreed with the district court that two inventors should be added to a family of PD-1 cancer treatment patents, even though their...more
In a Federal Register Notice dated August 3, 2020, the USPTO published a final rule on fee changes that take effect October 2, 2020. The final rule implements fee changes we first learned about in August of 2018, with some...more
The judicially-created doctrine of obviousness-type double patenting is one of the most vexing doctrines of U.S. patent law. In Immunex Corp. v Sandoz Inc., the Federal Circuit added another layer of complexity to the...more
The USPTO has initiated a new pilot program for expediting ex parte appeals from examiner rejections. Under the Fast-Track Appeals Pilot Program, applicants can pay $400 for expedited review in which case the USPTO will...more
The United States Patent and Trademark Office (USPTO) has now announced how it will exercise its authority under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to extend certain statutory deadlines. Unlike...more
The Federal Circuit decision in HZNP Medicines LLC v. Horizon Pharma USA, Inc. is a good reminder that even standard “patent lingo” can cause trouble down the line. Now that the court has denied rehearing en banc (with Judges...more
As set forth in this March 2, 2020 Federal Register Notice and effective immediately, the USPTO is going to start inquiring into petitions to revive an abandoned application, accept a delayed maintenance fee payment, or...more
In Supernus Pharmaceuticals, Inc. v. Iancu, the Federal Circuit held that the USPTO cannot charge a Patent Term Adjustment (PTA) deduction for “applicant delay” during a period when the applicant “could have done nothing to...more