For the second time in less than two weeks, a circuit court decided an appeal hinging on the Brulotte rule, which holds that patent royalties are impermissible when based on payments for the use of expired patents. Like the...more
Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more
On August 13, 2024, the US Court of Appeals for the Federal Circuit held in Allergan v. MSN that “a first-filed, first-issued, later-expiring claim” cannot be invalidated for obviousness-type double patenting (ODP) “by a...more
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
On August 13, 2024, a three-judge panel of the Court of Appeals for the Federal Circuit issued a decision, authored by Judge Lourie, in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061, which limits the...more
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
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
The Federal Circuit recently clarified the interplay between obvious-type double patenting (ODP) and patent term adjustments (PTA) granted pursuant to 35 U.S.C. § 154(b). In In re Cellect, the Federal Circuit explained that...more
The Supreme Court of Canada recently clarified the role of non-infringing options as well as springboard profits when calculating profits in patent infringement cases....more
Although it may seem counterintuitive, the PTAB has jurisdiction over expired patents, and patent owners may need to defend their expired patents in inter partes review. The PTAB recently reiterated this in Apple, Inc. v....more
Dear Patenticity, My start-up has a small portfolio of about a dozen patents covering our core technology. One of those patents has the 11.5 year maintenance fee coming due in the next six months, but this particular...more
When a patent is issued under the seal of the United States Patent and Trademark Office, it is signed by the Director of the USPTO or an Office official. The patent contains a grant to the patentee, and a printed copy of the...more
A reissue application may be filed by a patent owner to correct an error in a patent. Reissue applications are useful to correct substantive errors that cannot be corrected with a certificate of correction. ...more
On May 22, 2020, the Federal Court held that an action under the amended Patented Medicines (Notice of Compliance) Regulations (PMNOC Regulations) relating to saxagliptin (ONGLYZA) would not be rendered moot by the relevant...more
It has been nearly 10 years since the U.S. Biosimilars Pathway (the Biologics Price Competition and Innovation Act) was enacted. The first biosimilar product in U.S. history was approved and launched in 2015. Ten biosimilars...more
Addressing orders entered by the International Trade Commission (ITC) against imported ATMs, the US Court of Appeals for the Federal Circuit held that expenditures up to 10 years before the complaint may be used to establish...more
Following the European Commission’s draft proposal for implementing the so-called SPC manufacturing waiver the Committee on Legal Affairs of the European Parliament published a draft report on presenting its suggested...more
The Court of Appeals for the Federal Circuit issued two opinions on December 7 that address two unsettled questions relating to obviousness-type double patenting (OTDP). These issues are of particular interest to...more
The Federal Circuit recently issued a pair of decisions concerning the Gilead doctrine, which allowed later-issuing patents to be obviousness-type double patenting (ODP) references against earlier-issuing patents....more
The Situation: The French Intellectual Property Office ("IPO") previously refused to adjust the expiration date of a granted supplementary protection certificate ("SPCs") when it had been calculated on the date of grant of...more
Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the...more