News & Analysis as of

Patent Applications

USPTO issues memo clarifying written description guidance for claims to antibodies

by White & Case LLP on

Citing Amgen v. Sanofi, 872 F.3d 1367, 1378-79 (Fed. Cir. 2017), the USPTO advises that "when an antibody is claimed, 35 U.S.C. § 112(a) requires adequate written description of the antibody itself."...more

Are Invention Disclosure Documents Protected By Attorney-Client Privilege?

by Fox Rothschild LLP on

A common first step in the patent filing process is the completion of an invention disclosure form. The form asks the inventors to provide basic details about the invention, including who invented it, what problem does the...more

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - SimpleAir, Inc. v. Google LLC, Appeal No. 2016-2738 (Fed. Cir. 2018) - In SimpleAir, Inc. v Google LLC, the Federal Circuit vacated a district court’s motion to dismiss pursuant to Rule...more

UK Supreme Court Decision In Actavis V. Eli Lilly – Doctrine Of Equivalents Recognized

by Ladas & Parry LLP on

In its decision of July 12, 2017 in Actavis v. Eli Lilly, the Supreme Court of the United Kingdom for the first time formally adopted the concept of a doctrine of equivalents when considering what constituted an infringement...more

USPTO Withdraws Newly Characterized Antigen Test For Written Description Of Antibodies

by Foley & Lardner LLP on

The USPTO issued a two page memorandum to the Patent Examining Corps noting that some of the USPTO’s written description guidance pertaining to antibody claims is “outdated.” The memo specifically notes withdrawal of the...more

A New Manual of Patent Examining Procedure (MPEP) is Available / So is A Revised Chapter 2000 For Duty of Disclosure

A New Manual of Patent Examining Procedure (MPEP), the ninth edition, Revision 08.2017, was made electronically available on January 25, 2018...more

PTAB Reversed For Giving Process Step In Product Claims No Weight

by Jones Day on

Whether a process step in product claims is afforded patentable weight has been an issue gaining more attention recently. The Federal Circuit weighs in on the topic in In re Nordt Dev. Co., LLC, No. 2017-1445, 2018 WL 774097...more

USPTO Adopts Amgen v. Sanofi, Excises “Newly Characterized Antigen” Test from its Written Description Guidance for Antibody Claims

Last month, the USPTO issued a memorandum to its patent examining corps clarifying its guidance concerning the written description requirement for claims drawn to antibodies. In the memorandum, the USPTO adopts the Federal...more

Using Provisional Patent Applications in Invalidity Challenges

While provisional patent applications are never published and cannot become prior art, recent decisions from the U.S. Court of Appeals for the Federal Circuit illustrate that parties can nonetheless make effective use of...more

What Patent Attorneys, Patent Agents and Law Firms Need to Know about Communications with Clients

by Womble Bond Dickinson on

Originally published in IP Watchdog on February 22, 2018. Patent agents in the United States are authorized to practice in patent prosecution matters before the United States Patent and Trademark Office (“USPTO”). Such...more

The "Quick & Dirty" Provisional - And Other Mythical Creatures

by Workman Nydegger on

Frequently, after discussing the potential costs associated with pursuing patent protection, a potential new client will ask: “Can’t we just file a quick and dirty provisional patent application?” While provisional...more

Low-End Patents Usually Have Zero Value

by Snell & Wilmer on

I. Most Low-End Patents Have Zero Value. The term low-end generally denotes a low-cost product with corresponding low quality or value. In the context of patents, however, there is no corresponding low value because lack...more

News from Abroad -- Australia Remains a Gene-Patent Friendly Jurisdiction

When the Australian High Court ruled against the patentability of isolated naturally occurring genes in the Myriad decision, a number of commentators believed that the decision would ultimately invalidate claims directed to...more

Can I Sell My Invention? The Courts Confirm “On Sale” Bar to Patenting

Recent court decisions have confirmed that inventors run the risk of destroying their patent rights in the U.S. and abroad if they publicize their inventions or put them “on sale” before applying for a patent....more

In re Silver -- Texas Supreme Court Recognizes Patent Agent Privilege

In reversing an appellate court decision that had caused concerns throughout the patent world, the Texas Supreme Court recognized that communications between patent agents and clients could be covered by the attorney-client...more

Reverse or Remand: What is the proper remedy on appeal where the Board fails to carry its burden?

Is there a growing split in the Federal Circuit on the proper remedy where the Patent Trial and Appeal Board (“Board”) fails to carry its burden? The recent precedential decision of In re Hodges, __ F.3d __, 2018 WL 817248...more

Fresh From the Bench: Latest Federal Circuit Court Cases

Arendi S.A.R.L. v. Google LLC, Appeal No. 2016-1249 (Fed. Cir. Feb. 20, 2018) - In Arendi S.A.R.L. v. Google LLC, the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB) obviousness determination following...more

Go Ahead and Check It: Failure to Expressly Request Early Commencement of National Stage Examination Causes Headaches

In Actelion Pharm, Ltd. v. Matal, No. 17-1238 (Fed. Cir. Feb. 6, 2018), the Federal Circuit affirmed the USPTO’s patent term adjustment determination regarding a dispute over when national stage examination...more

Updates to USPTO eMod Project to Improve E-Filing/Managing Patent Applications

The U.S. Patent and Trademark Office (USPTO) is implementing eCommerce Modernization (eMod), as discussed at a USPTO Patent Quality Chat webinar on February 13, 2018. Highlighted features of the eMod project are described in...more

Shortsighted Thinking Can Lead to Worthless Patents

by Snell & Wilmer on

A. The Goal Is to Make Money and Not to Merely Get a Patent. A patent defines a piece of intellectual property. Analogous to the size of a parcel of land, the size of a patent (usually referred to as its scope) is...more

Making Amendments to Range Limitations in Patent Claims

by Workman Nydegger on

A patent claim that includes a numerical range may be rejected based on prior art that discloses the range. For example, prior art is considered to anticipate a range if it discloses (1) “a specific example … which is within...more

Are You Sure You Own That Patent?

by Downs Rachlin Martin PLLC on

Hint: The standard employment agreement you have been using that includes an assignment of IP provision might not be sufficient. - In the United States, employers don’t own an employee’s or consultant’s inventions unless...more

The Perils of Pre-Patenting Manufacturing and Distribution Agreements

by Locke Lord LLP on

Does this fact pattern apply to you or your company? You ask one or more companies to manufacture and distribute your idea for the next big thing (“NBT”). You ask for manufacturing and distribution services on a date, T1,...more

Patent Term Adjustment: Lessons Learned from the Federal Circuit Decision in Actelion v. Matal

We can take two valuable lessons from a recent decision of the Federal Circuit: 1. Review all check boxes on forms when filing a U.S. patent application; and 2. The United States Patent and Trademark Office is not...more

PTAB Denies Institution of IPR on Two Humira Patents

by Goodwin on

The PTAB has denied institution of inter partes review of two Abbvie patents that relate to HUMIRA (adalimumab). On February 9, 2018, the PTAB denied Sandoz’s IPR2017-01824 on U.S. Patent No. 9,512,216, which is directed to a...more

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