New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Are Your Granted Patents in Danger of a Post-Grant Double Patenting Challenge?
Allergan USA v. MSN Laboratories Private Ltd., No. 2024-1061 (Fed. Cir. Aug. 13, 2024) - On August 13, 2024, the Federal Circuit reversed a district court’s decision that a patent was invalid for obviousness-type double...more
On August 13, 2024, the US Court of Appeals for the Federal Circuit held in Allergan v. MSN that “a first-filed, first-issued, later-expiring claim” cannot be invalidated for obviousness-type double patenting (ODP) “by a...more
In Allergan USA v. MSN Labs, the US Court of Appeals for the Federal Circuit held, that later-filed, later-issued claims cannot serve as proper reference for invalidating earlier-filed, earlier-issued claims having the same...more
On August 13, the Federal Circuit issued a precedential ruling in Allergan v. MSN Laboratories (Case No. 24-1061). This decision reversed the District of Delaware's application of the Federal Circuit precedent in In re:...more
In a highly anticipated decision in Allergan v. MSN Labs., the Federal Circuit held yesterday that claims in a first-filed, first-issued, later-expiring patent cannot be invalidated for double patenting by claims in a...more
On August 13, 2024, a three-judge panel of the Court of Appeals for the Federal Circuit issued a decision, authored by Judge Lourie, in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061, which limits the...more
The recent In re Cellect decision by the Federal Circuit1 is significant for patent owners who have obtained patent-term adjusted patents in the same patent family. The court held that term-adjusted patents can be potentially...more
On August 13, 2024, the U.S. Court of Appeals for the Federal Circuit issued a welcomed decision to patentees in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061 (Fed. Cir. 2024) clarifying the scope of...more
Please join our Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. In this episode, Troutman Pepper Partners Andy...more
The United States Patent and Trademark Office (“USPTO”) periodically evaluates the delicate balance of the U.S. patent system to protect innovation without excessively stifling competition. U.S. patents give patent owners the...more
Join Wolf Greenfield for a mid-year review of litigation and PTAB trends at 12:00pm ET or 9:00pm ET. This webinar will cover: 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping,...more
On Friday, May 10, 2024, the USPTO issued a notice of proposed rulemaking in the Federal Register directed at amending the rules of practice to add a requirement for terminal disclaimers filed to overcome rejections for...more
On May 9, the USPTO released a Notice of Proposed Rulemaking for significant changes to terminal disclaimers. The USPTO suggests adding a new requirement that applicants can overcome an obviousness-type double patenting...more
Patent owners need to be wary of the pitfalls when attempting to procure follow on patents to an existing technology. It could turn out your own patents could be used against others in the portfolio to render them invalid or...more
Filing a continuation application from a parent patent is an implicit admission that obviousness-type double patenting (ODP) applies to the resulting continuation patent. A Terminal Disclaimer in the continuation patent over...more
Hosted by American Conference Institute, the 22nd Advanced Summit on Life Sciences Patents returns for another exciting year with curated programming that will provide practical insights on how to maximize your patent term...more
Similar to other jurisdictions, a patent in Canada is granted for one invention only. Accordingly, in instances where multiple inventions are claimed in a single application, it may be necessary to parse out the inventions...more
The Federal Circuit recently clarified the interplay between obvious-type double patenting (ODP) and patent term adjustments (PTA) granted pursuant to 35 U.S.C. § 154(b). In In re Cellect, the Federal Circuit explained that...more
In a recent decision, the Court of Appeals for the Federal Circuit (“CAFC”) resolved district court splits regarding obviousness-type double patenting (“ODP”) by holding that ODP is still a valid challenge to patent validity...more
The Federal Circuit recently in In re Cellect, invalidated a series of patents based on obviousness-type double-patenting (ODP), finding that term-adjusted patents (PTA) in the same family are invalid under ODP in the absence...more
The U.S. Patent and Trademark Office (USPTO) organizes its examining corps into technical centers (TCs). Each TC is dedicated to one or more general technical fields. In some cases, one TC may include two or more unrelated...more
The EPO confirmed that a European patent application can be refused on the basis of double patenting under Articles 97(2) and 125 EPC, if a patent with the same effective date has already been granted for the same subject...more
Spanning 5525 miles, the United States-Canada border is the longest border between any two countries. U.S. goods and services trade with Canada totaled an estimated $718.5 billion in 2018, possibly the largest bilateral trade...more
Though there are many similarities between U.S. and Canadian patent law, the following significant differences can affect the key decision of whether to file in Canada. 1. Grace period time limit - Sections 28.2 and...more