New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
On Tuesday, the en banc Federal Circuit released its highly anticipated decision in LKQ v. GM Global Technology Operations LLC, rejecting as “improperly rigid” the previous standard for evaluating whether a design patent is...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
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
Personalized Media Communications, LLC v. Apple, Inc., Appeal No. 2021-2275 (Fed. Cir. Jan. 20, 2023) Our Case of the Week focuses on the doctrine of prosecution laches. Following a bench trial on the issue held shortly...more
Canada recently introduced patent rules related to excess claim fees and continued examination fees that have the potential to complicate conventional approaches to filing divisional patent applications....more
ACI’s Advanced Summit on Life Sciences Patents is back in person on June 2–3 in New York City. Our reimagined 2022 conference will provide practical insights on how to implement bullet-proof patent prosecution tactics,...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
Partner Stephanie Lodise, Ph.D., and Patent Agent Tracy Palovich, Ph.D., break down the differences between obviousness rejections and obviousness-type double patenting rejections. They then provide important prosecution...more
The Federal Circuit published a precedential decision on September 1, 2021 regarding the unenforceability of a pharmaceutical patent due to inequitable conduct. In Belcher Pharmaceuticals LLC v. Hospira, Inc., the Court...more
In today's connected global economy, obtaining patent protection in multiple jurisdictions is the best way for companies to protect their IP on a global scale. But every jurisdiction has different patentability requirements...more
Long before the AIA, declarations were a tool that was available during patent prosecution to put evidence, e.g., post-filing data and expert opinions, in front of an Examiner to rebut obviousness or lack of enablement...more
It is difficult to think of a case that has had more influence on patent practice than KSR v. Teleflex (550 U.S. 398 (2007)). In KSR, the U.S. Supreme Court rejected the established practice that an invention could not be...more
The Federal Circuit held recently that the "all substantive rights" test, used heretofore to determine the identity of the "patentee" for purposes of satisfying 35 U.S.C. § 281, should be the standard for determining common...more
Perfect Your Patent Prosecution Strategies and Master the Patent Application Process in the U.S and Around the World. ACI’s 18th Global Summit on Life Sciences Patents virtual conference this August will provide practical...more
The Patent Trial and Appeal Board (PTAB) has rejected a patent owner’s argument that judicial estoppel should prevent a petitioner from making obviousness arguments in support of its petition for inter partes review (IPR)....more
On October 15, 2019, the PTAB designated as informative two decisions providing insight into when it is an appropriate for an examiner to reply upon a so-called “design choice” rationale in support of an obviousness...more
Design patent obviousness requires a heavy threshold burden of proof. Challengers have to find a “primary reference,” i.e., prior art that has “basically the same” design characteristics as the claimed design. Below is an...more
The most persuasive IPR petitions offer fresh unpatentability theories never considered before. But petitions that simply repackage old issues often don’t gain traction. So, when you’re citing prior art that was before the...more
On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG,...more
On March 21, 2018 the PTAB issued a press release announcing that two decisions denying review under 35 U.S.C. § 325(d) are designated as informative: Kayak Software Corp.v. International Business Machines Corp.,...more
Federal Circuit Summaries - Before Lourie, Reyna, and Chen. Appeal from the U.S. District Court for the Eastern District of Texas, Judge J. Rodney Gilstrap. Summary: Filing a terminal disclaimer to overcome an...more
Federal Circuit Summaries - Before Newman, Bryson, and Moore. Appeal from the Patent Trial and Appeal Board. Summary: Prosecution disclaimer occurred when an applicant explained why claims were amended and the Examiner...more
The PTAB is starting to provide teeth to the Federal Circuit’s lead compound analysis making it more difficult for petitioners to successfully challenge chemical patents in AIA proceeding, as well as providing patent owners...more
In a non-precedential decision issued in Merck Sharp & Dohme B.V., v. Warner Chilcott Co. LLC, the Federal Circuit reversed the district court’s obviousness ruling as being improperly grounded in hindsight. This decision...more
Agenda: • UK Supreme Court Decision on Infringement – “Equivalents” – Use of the prosecution history • Doctrine of Equivalents in the United States • Plausibility before the EPO and UK courts – Inventive step of...more