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 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
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
Earlier this year, two new laws were enacted that impact patent listings in the Orange Book (drugs) and Purple Book (biologics). The Orange Book Transparency Act primarily codifies current FDA practices, but adds a new...more
The USPTO has issued a request for comments on proposed changes to requirements for admission to the patent bar. Last week I had an opportunity to speak with Commissioner for Patents Drew Hirshfeld, who currently is...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
As a non-precedential decision on claim construction, Horizon Pharma, Inc. v. Dr. Reddy’s Laboratories Inc., may not be relevant to any other case, but it caught my attention as an example of the perils of claim drafting....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 Federal Circuit decision in GlaxoSmithKline LLC v. Teva Pharmaceuticals USA, Inc., is getting attention for potentially “endangering” the practice of skinny labelling. Indeed, the Federal Circuit held that Teva’s skinny...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 a decision that is not very surprising but nonetheless worth taking note of, the Federal Circuit found that a reasonable jury could have found claims reciting methods using a recombinant polypeptide to be anticipated by...more
The Federal Circuit decision in Bio-Rad Laboratories, Inc. v. 10X Genomics Inc., addresses several interesting issues. This article focuses on the affirmance of the district court decision that the “tangentiality” exception...more
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 Nike, Inc. v. Adidas, AG, the Federal Circuit held in the context of an Inter Partes Review proceeding that “[i]f the Board sua sponte identifies a patentability issue for a proposed substitute claim … it must provide...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
In Biogen International GmbH v. Banner Life Sciences LLC, the Federal Circuit construed language of the Hatch-Waxman patent term extension statute in a manner Biogen argued was inconsistent with the “active moiety” focus of...more
The United States Patent and Trademark Office (USPTO) has extended the period for deferring certain deadlines under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) with important modifications. The most...more
In an effort to help independent inventors and small businesses bring “important and possibly life-saving treatments” to market more quickly, the United States Patent and Trademark Office (USPTO) is implementing the COVID-19...more
The United States Patent and Trademark Office (USPTO) has launched a new platform that could expedite the development of COVID-19 related technologies. As explained in the USPTO’s press release, the Patents 4 Partnerships...more
The United States Patent and Trademark Office (USPTO) has extended the period for deferring certain deadlines under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). The relief still applies only to those...more
In CardioNet, LLC v. InfoBionic, Inc., the Federal Circuit found that the medical device claims at issue were “directed to” patent-eligible subject matter under 35 USC § 101. The district court had reached the opposite...more