News & Analysis as of

Intellectual Property Protection Patent Term Adjustment Patent Litigation

Saul Ewing LLP

What Intellectual Property Owners Need to Know Today About Obviousness-Type Double Patenting

Saul Ewing LLP on

What You Need to Know: • Instead of filing multiple applications claiming different aspects of an invention but not sharing a single priority chain, patentees should strive to file highly comprehensive applications that...more

Foley & Lardner LLP

Leveraging USPTO Delays To Maximize Patent Term

Foley & Lardner LLP on

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

Baker Botts L.L.P.

Intellectual Property Report March 2025

Baker Botts L.L.P. on

This Article analyzes over 89,000 patents litigated over a twenty-year period to determine how the number of office actions to allowance during prosecution impacts rates of invalidity during subsequent litigation. Many...more

Baker Botts L.L.P.

Maximizing Patent Term in the United States: Patent Term Adjustment, Patent Term Extension, and the Evolving Law of...

Baker Botts L.L.P. on

Under U.S. law, most patents are limited to a term of 20 years from the earliest nonprovisional filing date. However, Patent Term Adjustment (PTA) and Patent Term Extension (PTE) can be used in certain circumstances to gain...more

Smart & Biggar

Navigating unity of invention and double patenting issues: practical strategies for patent protection in Canada

Smart & Biggar on

Unity of invention and double patenting law and practice in Canada can create challenges for patent applicants. For example, applicants may not expect a unity of invention objection to be raised, requiring claims to be...more

Smart & Biggar

Canadian patent law 2024: a year in review

Smart & Biggar on

2024 was an active year in Canadian patent law, with the Federal Court issuing several decisions on the merits regarding invalidity and/or infringement. The courts also considered issues of the regulation of patent agents,...more

Smart & Biggar

2024 highlights in Canadian life sciences IP and regulatory law

Smart & Biggar on

In 2024, the Rx IP Update team at Smart & Biggar reported on a number of developments in Canadian life sciences IP and regulatory law. Highlights from 2024 are below; see also our top ten Rx IP Update reads of 2024....more

A&O Shearman

Federal Circuit Provides Clarity On Proper Obviousness-Type Double Patenting References

A&O Shearman on

In Allergan USA, Inc. et al., v. MSN Laboratories Private Ltd., et al., the United States Court of Appeals for the Federal Circuit issued a precedential decision relating to obviousness-type double patenting (“ODP”) and...more

Maynard Nexsen

When Does My Patent Expire? A Quick Glance at Patent Term Adjustment Prior to the Outcome of Cellect

Maynard Nexsen on

The term of a U.S. utility patent extends 20 years from the date of priority filing. However, the USPTO provides a guarantee of “prompt patent and trademark office response” that may allow the term to extend beyond the 20...more

Morgan Lewis

Federal Circuit Clarifies Proper Double-Patenting Reference

Morgan Lewis on

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

Troutman Pepper Locke

Federal Circuit Decision Clarifies Obviousness-Type Double Patenting and Patent Term Adjustments in Allergan v. MSN Laboratories

Troutman Pepper Locke on

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

Kilpatrick

First-filed, Later-Expiring Patent Protected from Obviousness-Type Double Patenting Post In re Cellect

Kilpatrick on

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

Troutman Pepper Locke

EDVA Upholds USPTO’s Calculation of Patent Term Adjustment

Troutman Pepper Locke on

Under the patent laws, the term of a patent may be increased for delays by the U.S. Patent and Trademark Office (USPTO) during the application process. See 35 U.S.C. § 154(b)(1). Conversely, the USPTO can reduce a patent term...more

McDermott Will & Emery

Cellect Your Weapon: Navigating Potential Arguments in the Aftermath of In re Cellect

McDermott Will & Emery on

In In re Cellect, 81 F.4th 1216 (Fed. Cir. 2023), the US Court of Appeals for the Federal Circuit held that a later-expiring patent can be invalid for obviousness-type double patenting (ODP) in view of an earlier-expiring,...more

Ballard Spahr LLP

In re Cellect Poses an Obvious Dilemma

Ballard Spahr LLP on

In August 2023, the Federal Circuit in In re Cellect held that in evaluating unpatentability for obviousness-type double patenting (ODP) of a patent that has received patent term adjustment (PTA), the relevant date is the...more

Jones Day

Federal Circuit Denies Petition for Rehearing En Banc Filed By Cellect, LLC

Jones Day on

The Federal Circuit denied Cellect, LLC's petition for rehearing en banc of the In re Cellect case, which held that the expiration of a patent for obviousness-type double patenting ("ODP") purposes is the expiration date...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023)...

Cellect owned four patents with claims that were found unpatentable by the PTAB in ex parte reexaminations for obviousness-type double patenting. The patents were granted Patent Term Adjustment (“PTA”) for the Office’s delay...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

[Webinar] Federal Circuit IP Appeals: Summaries of Key 2023 Decisions - January 23rd, 1:00 pm - 2:00 pm EST

Directors Michael Joffre, Ph.D., William H. Milliken, Anna G. Phillips, and Richard A. Crudo will present the webinar "Federal Circuit IP Appeals: Summaries of Key 2023 Decisions" on Tuesday, January 23, 2024, at 1:00 p.m....more

Wolf, Greenfield & Sacks, P.C.

Wolf Greenfield Attorneys Preview What’s Ahead in 2024

2024 is upon us and it’s going to be another busy year for intellectual property law. In this episode of IP Talk with Wolf Greenfield, you’ll hear Wolf Greenfield attorneys from a variety of practice areas offering their...more

Akin Gump Strauss Hauer & Feld LLP

In Wake of In re Cellect, District Court Interprets Safe Harbor Statute and Finds Patent Not Invalid for Obviousness-Type Double...

The District Court for the District of Delaware recently held on summary judgment that a patent with 2,295 days of combined patent term adjustment (PTA) and patent term extension (PTE) was not invalid for obviousness-type...more

Fitch, Even, Tabin & Flannery LLP

Calculating Patent Term Extension for FDA Delay: Original Patent or Reissue Patent Issue Date?

The Federal Circuit appeal in Merck Sharp & Dohme B.V., Merck Sharp & Dohme, LLC v. Aurobindo Pharma USA, Inc. et al., concerns whether patent term extension (PTE) for regulatory delay, in particular delay for FDA drug...more

Knobbe Martens

Federal Circuit Review - August 2023

Knobbe Martens on

IPR Petitioners Must Be Permitted to Respond to Claim Constructions First Proposed in Patent Owner Response - In Axonics, Inc. v. Medtronic, Inc., Appeal No. 22-1532, the Federal Circuit held that where a patent owner in...more

American Conference Institute (ACI)

[Webinar] 3rd Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA - October 10th - 26th, 1:00 pm EST

Gain a comprehensive understanding of Hatch-Waxman and BPCIA essentials, a critical competency for legal and business professionals in the biopharmaceutical arena. Attend ACI’s Hatch-Waxman and BPCIA Proficiency Series...more

McDermott Will & Emery

The End Is Not So Near: Patent Term Adjustments Count in Obviousness-Type Double Patenting Determinations

Addressing for the first time how patent term adjustments (PTAs) interact with obviousness-type double patenting (ODP), the US Court of Appeals for the Federal Circuit concluded that when members of a patent family have...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Mind Your Ps and Qs, and Your PTAs Too

Last week, the Federal Circuit held that obviousness-type double patenting trumps patent term adjustment, opening the door for invalidity attacks that to date had been questionable. In re Cellect was an appeal from a...more

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