For many companies in many industries, patents are an important tool for driving innovation. At the same time, patents limit competition, so that companies must also be wary of their competitors’ patent portfolios. The result...more
About a week before the holidays, the U.S. Patent and Trademark Office quietly published a trio of new subject matter eligibility examples directed to the abstract idea exception to patentability. These are the latest in a...more
Earlier this summer, in Ariosa Diagnostics, Inc. v. Sequenom, Inc., the Federal Circuit affirmed a decision by the District Court for the Northern District of California granting summary judgment of invalidity of the asserted...more
Recently, I had the privilege of speaking at the annual meeting of the American Society of Pharmacognosy in Colorado. Members of this scientific association are dedicated to identifying and isolating natural products from...more
Executive Summary: Three years removed from the Federal Circuit’s decision in Wyeth v. Kappos, patentees are seeking additional extensions of patent term based on the recent decision issued in Exelixis v. Kappos, which could...more
[T]he preamble constitutes a limitation when the claim(s) depend on it for antecedent basis, or when it "is essential to understand limitations or terms in the claim body." On December 27, 2012, in C.W. Zumbiel Co. v....more
[A] third party cannot sue the PTO under the APA to challenge a PTO decision to issue a patent. On December 6, 2012, in Pregis Corp. v. Kappos, the U.S. Court of Appeals for the Federal Circuit (Prost, Clevenger,...more
In an opinion issued earlier this month, Judge Ellen Segal Huvelle of the U.S. District Court for the District of Columbia determined that Novartis AG and Novartis Vaccines and Diagnostics, Inc. had not satisfied the 180-day...more
On November 1, 2012, the District Court for the Eastern District of Virginia issued a decision in Exelixis v. Kappos (Case No. 1:12cv96), rejecting the U.S. Patent and Trademark Office’s (USPTO’s) interpretation of the...more
On Tuesday of last week, the Federal Circuit held that a party bringing a request for inter-partes reexamination may not appeal a decision by the Director of the U.S. Patent and Trademark Office that certain prior art does...more
A few years ago we had provided some cautionary advice relating to the dichotomy between a timely filed response in accordance with 35 U.S.C. § 21(b), and a delayed response pursuant to 37 C.F.R. § 1.704(b). 35 U.S.C. §...more
That rarest of rara aves issued from the Supreme Court yesterday, an affirmance of a Federal Circuit opinion in Kappos v. Hyatt. Perhaps it is because, as in Stanford v. Roche one of the parties was the government (here,...more
On June 28, 2010, the Supreme Court issued its long-awaited decision on business method patents in Bilski v. Kappos, No. 08-964. The Court unanimously agreed that Bilski’s invention, which was a process directed toward “how...more
On June 28, 2010, the U.S. Supreme Court issued a decision in Bilski v. Kappos, No. 08- 964, slip op. (U.S. June 28, 2010) rejecting the rigid “machine-or-transformation” test for patent-eligible subject matter proffered by...more