News & Analysis as of

Obviousness-Type Double Patenting (ODP) Patent Applications United States Patent and Trademark Office

American Conference Institute (ACI)

[Event] 23rd Advanced Summit on Life Sciences Patents - May 19th - 20th, New York, NY

At ACI’s 23rd Advanced Summit on Life Sciences Patents, you can expect informational overviews and thorough discussion of every facet of the industry. In a time of major legislative, regulatory, and judicial change, you can't...more

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

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

Procopio, Cory, Hargreaves & Savitch LLP

Threat to Many Patent Portfolios Fades as USPTO Withdraws Controversial Proposed Rule

Facing strong opposition from a rare alliance of the pharma and tech industries as well as past agency leaders, the U.S. Patent and Trademark Office (USPTO) has withdrawn a proposed new rule directed at Terminal Disclaimer...more

Mintz - Intellectual Property Viewpoints

A Later-Filed, Later-Expiring Unrelated Patent is Not a Proper Reference Patent for an Obviousness-Type Double Patenting Rejection

The recent Patent Trial and Appeal Board (PTAB) decision Ex Parte Baurin reversed an Examiner rejection for obviousness-type double patenting (ODP) in U.S. Application No. 17/135,529 over the later-filed, later-expiring...more

Jones Day

Supreme Court Denies Cellect Petition on Interplay Between PTA and ODP

Jones Day on

The Supreme Court denies Cellect LLC's petition for certiorari to consider whether patent term adjustment ("PTA") should be included in patent term for obviousness-type double patenting ("ODP") purposes....more

Foley Hoag LLP

Patent Term Adjustment and ODP: USPTO Defends Federal Circuit's Cellect Decision

Foley Hoag LLP on

In December 2021, patent practice was upended by four related United States Patent and Trademark Office (USPTO) Patent Trial & Appeal Board (PTAB) decisions holding that patents subject to statutory Patent Term Adjustment...more

Strafford

[Webinar] Obviousness-Type Double Patenting and USPTO Proposed Rules for Terminal Disclaimers - Recent Court Treatment,...

Strafford on

This CLE webinar will guide patent counsel on obviousness-type double patenting (ODP), including the recent decisions that have relied on Cellect. The panel will also discuss the USPTO's proposed terminal disclaimer rule and...more

McDonnell Boehnen Hulbert & Berghoff LLP

The USPTO's Proposed Terminal Disclaimer Rule: A Litigator's Perspective

As discussed at length in a previous post on this blog (see "USPTO Proposed Rule Change to Terminal Disclaimer Practice"), the U.S. Patent and Trademark Office has proposed amending the form of terminal disclaimer to be used...more

Mintz - Intellectual Property Viewpoints

A Continuation Application is an Implicit Admission of Obviousness-Type Double Patenting When Filed from a Parent Patent

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

McDonnell Boehnen Hulbert & Berghoff LLP

Living with Cellect – Three Best Practices

On Friday, January 19, 2024, the Court of Appeals for the Federal Circuit issued an Order refusing to rehear In re Cellect, LLC en banc. This likely means that the holding in In re Cellect will represent the law regarding...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

American Conference Institute (ACI)

[Event] Paragraph IV Disputes Conference - November 9th - 10th, New York, NY

Join the conference that the “who’s who” of Hatch-Waxman litigators have designated as the forum which sets the standards for Paragraph IV practice. ACI’s Paragraph IV Litigation Conference is returning LIVE & IN-PERSON to...more

Goodwin

A Joint Research Pitfall – Soon to be Resolved?

Goodwin on

Innovators in life sciences at companies and universities often collaborate and conduct research under a joint research agreement (JRA). The Cooperative Research and Technology Enhancement Act of 2004 (the “CREATE Act”) was...more

Foley & Lardner LLP

USPTO Changes Small Entity Rules To Promote CRADAs

Foley & Lardner LLP on

While I stand by my view that the doctrine of obviousness-type double patenting is one of the most complicated aspects of U.S. patent law, regulations governing the ability to claim “Small Entity” status and pay reduced USPTO...more

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