News & Analysis as of

Filing Deadlines Patent Infringement

Akin Gump Strauss Hauer & Feld LLP

Patent Owner Precluded from Asserting in Litigation Claims Obtained Through Ex Parte Reexamination

A district court has denied a request to amend patent infringement contentions to add claims obtained through ex parte reexamination after the case had been substantially narrowed through a parallel inter partes review (IPR)...more

Smart & Biggar

Amended PMNOC Regulations: First Anniversary Update

Smart & Biggar on

As previously reported, the amended Patented Medicines (Notice of Compliance) Regulations (“Regulations”) came into force on September 21, 2017, heralding significant changes to the landscape for pharmaceutical companies in...more

Robinson & Cole LLP

IP+T: Intelligence Newsletter - December 2017

Robinson & Cole LLP on

If you own trademark registrations in the United States, you are required to make certain filings with the U.S. Patent and Trademark Office (PTO) to keep your trademark registration(s) alive. In particular, prior to the sixth...more

Jones Day

Delayed Payment Proves Fatal for Cultec’s PTAB Challenge

Jones Day on

Under 35 U.S.C. § 315(b), a petition for inter partes review (IPR) may not be filed more than one year after the date on which the petitioner was served with a patent infringement complaint. Thus, a petition must meet all of...more

Smart & Biggar

Rx IP Update - December 2016

Smart & Biggar on

Janssen seeks leave to appeal to SCC regarding FCA decision upholding Minister of Health’s decisions relating to administrative drug submissions - As reported previously, on October 12, 2016, the Federal Court of Appeal...more

Foley & Lardner LLP

Timing Is Everything: Successful Joinder Motions At The PTAB

Foley & Lardner LLP on

The joinder provisions of inter partes review (IPR) proceedings can be a great tool to circumvent the 1-year IPR filing deadline following service of a complaint for infringement. However, grant of a joinder petition by the...more

Foley & Lardner LLP

PTAB Holds Technical Difficulties Will Not Save Late-Filed IPR Petitions

Foley & Lardner LLP on

The PTAB recently stood firm in denying a petitioner’s motion to change the filing dates of two IPR petitions that missed a statutory deadline by less than ten minutes. Case IPR2016-00281 and IPR2016-00282 (Patents 8,603,514...more

Faegre Drinker Biddle & Reath LLP

File It Early: The PTAB Rejects an IPR Petition for Being One Day Late—Despite Protestations of "Malfunctioning" PTO Website

35 U.S.C. § 315(b) bars petitions for an inter partes review that are filed “more than one year after the date on which the petitioner, real party in interest or privy of the petitioner is served with a complaint alleging...more

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