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
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
In In re Cellect, the Federal Circuit effectively held that Patent Term Adjustment (PTA) awarded under 35 USC § 154 is not protected from obviousness-type double patenting (OTDP) in view of a patent with the same 20-year...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 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 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
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
In Chudik V. Hirshfeld, the Federal Circuit upheld the USPTO’s determination that a Patent Term Adjustment (PTA) award for “C” delay is not available when an examiner reopens prosecution after an Appeal Brief is filed,...more
One of the most confusing—and frustrating—aspects of the USPTO’s Patent Term Adjustment (PTA) rules is the mismatch between the PTA rules and the Information Disclosure Statement (IDS) rules. In Gilead Sciences, Inc. v. Lee,...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
In Intra-Cellular Therapies, Inc. v. Iancu, the Federal Circuit agreed with the USPTO’s Patent Term Adjustment (PTA) calculation that charged a deduction for “applicant delay” for time after the applicant filed a first...more
In Mayo Foundation for Medical Education and Research v. Iancu, the Federal Circuit agreed with the USPTO’s Patent Term Adjustment (PTA) calculation that excluded prosecution that occurred after an interference was decided...more
The USPTO has announced new procedures patent holders can follow to obtain additional Patent Term Adjustment (PTA) under the Federal Circuit’s January 2019 decision in Supernus Pharm., Inc. v. Iancu. According to the May 9,...more
In Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical Inc., Novartis scored another obviousness-type double patenting (OTDP) win when the Federal Circuit held that a post-URAA child patent could not be cited as an...more
12/18/2018
/ Abbreviated New Drug Application (ANDA) ,
Novartis ,
Obviousness ,
Orange Book ,
OTDP ,
Patent Litigation ,
Patent Term Adjustment ,
Patent Term Extensions ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Pre-GATT ,
USPTO
In Novartis AG v. Ezra Ventures LLC, the Federal Circuit addressed “the interplay between a patent term extension (PTE) granted pursuant to 35 U.S.C. § 156 and the obviousness-type double patenting doctrine.” In upholding the...more
In Novartis v. Lee (Fed. Cir. 2014), the Federal Circuit agreed with the USPTO that “time spent in a continued examination” does not count towards the three years the USPTO is allotted to examine a patent before if it must...more
The USPTO appears to have dropped its plans to overhaul the Information Disclosure Statement (IDS) process, but that’s no excuse for its failure to process IDSs in accordance with its current rules. Most egregiously, the...more
Some patent term adjustment (PTA) cases have broad impact–like Wyeth v. Kappos and Novartis v. Lee–but Acetelion Pharmaceuticals, Inc. v. Lee addresses a more esoteric issue: when does the 14-month clock start to run in a...more
In Singhal v. Lee, the U.S. District Court for the Eastern District of Virginia dismissed a complaint that challenged the Patent Term Adjustment (PTA) awarded to two patents, because the complaint failed to state a claim upon...more
According to this bulletin from Lee International IP & Law Group in South Korea, Korean patents filed on or after March 2012 may be entitled to Patent Term Adjustment if they issued more than 4 years after the filing date and...more
In Magna Electronics, Inc. v. TRW Automotive Holdings Corp., No. 1:12-cv-654; 1:13-cv-324 (Dec. 10, 2015), Judge Maloney of the U.S. District Court for the Western District of Michigan granted TRW’s motion for partial summary...more
In Pfizer v. Lee, the Federal Circuit affirmed the decision of the U.S. District Court for the Eastern District of Virginia that upheld the USPTO’s Patent Term Adjustment (PTA) calculation that stopped the clock running...more
In Daiichi Sankyo Co. v. Lee, the Federal Circuit upheld the USPTO’s post-Wyeth Patent Term Adjustment (PTA) procedures, and found that the USPTO did not abuse its discretion when it limited the Interim Procedures to...more
In Mohsenzadeh v. Lee, the Federal Circuit affirmed the district court’s decision that the USPTO’s delay in issuing a Restriction Requirement in a parent application does not earn Patent Term Adjustment (PTA) for the ensuing...more
In a June 15, 2015 Federal Register Notice, the USPTO announced the Expedited Patent Appeal Pilot program, which will run until 2,000 ex parte patent appeals are expedited under the program, or until June 20, 2016, whichever...more