News & Analysis as of

Patent Prosecution

Xitronix Corporation v. Kla-Tencor Corporation

by Knobbe Martens on

Federal Circuit Summaries - Before Moore, Mayer, and Hughes. Appeal from U.S. District Court for the Western District of Texas. Summary: The Federal Circuit...more

Patent Prosecutors Beware: Earlier Publication Anticipates Broad Claims of Continuing Application

by Jones Day on

A recent written decision by the PTAB in connection with an inter partes review (IPR) proceeding is a reminder to patent prosecutors to carefully consider the possible construction of claim terms in a continuation or...more

Patent Prosecution Word of the Day: “Infundibuliform”

Today’s Word of the Day from Wordsmith.org is “infundibuliform,” a neat word for funnel-shaped. The word has been used in at least two dozen patents and in the claims of five: 6,276,549; 4,747,343; 4,416,404; 4,288,982; and...more

Declarations as New Evidence to Overcome § 325(d)

by Jones Day on

We have published other blog postings relating to 35 U.S.C. §325(d), including a blog posting that addresses the PTAB’s October 24, 2017 notice designating three of its decisions as informative (here). Recently, the PTAB...more

The Board Gives Section 325(d) Sharp Teeth—Part III —Things Are Looking Up for Patent Owners

This is the third of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part two appeared in our November 2017 newsletter. As we have noted in each of...more

The Turning Tide of Adoption of the Lead Compound Analysis Is Favoring Patent Owners at the PTAB

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

If You Try to Hide Prosecution Conduct, Then the Court will Presume You Had Something to Hide

In Regeneron Pharmaceuticals v. Merus N.V., [16-1346] the Federal Circuit denied rehearing and rehearing en banc the July panel decision, previously discussed here, that litigation misconduct warranted a finding of...more

Worldwide Bolar-type Provisions*

Please see full chart for Bolar Excemption rules in foreign countries regarding Clinical Trials, New Drugs, Biosimilars and Foreign Jurisdiction issues. ...more

Bolar Exemption in Europe and Asia

Bolar exemption in Europe - The Bolar exemption is governed by European Directive 2001/83/EC on the Community Code relating to medicinal products for human use. Article 10(6) excludes from infringement of patent rights or...more

Bolar Exemptions in North America

Bolar Exemptions in the U.S. Because approval by the U.S. Food and Drug Administration (FDA) is a long, sometimes arduous process, U.S. law provides a research or experimental use exemption with respect to regulated...more

No Need to be your Own Lexicographer

The word of the day for December 14 from Wordsmith.org was ensiform, meaning sword-shaped, which is a potentially useful work for patent prosecutors, and in fact has been useful to at least a few...more

Global Patent Prosecution Newsletter - December 2017

Worldwide Bolar Exemptions - Many countries have exemptions for patent infringement for a product and/or process that is not being used for direct commercialization and profit. For biopharmaceuticals, this exemption,...more

Judge Koeltl Agrees that “Access” to Confidential Information is Enough to Trigger a Prosecution Bar

On November 20, 2017, District Judge John G. Koeltl (S.D.N.Y.) approved a prosecution bar for “any individual who gains access” to confidential material. In addition, Judge Koeltl determined that post-issuance proceedings,...more

Patent Quality Chat: How Is A USPTO Examiner’s Work Product Reviewed?

In patent prosecution, the feedback loop between interested parties including patent prosecutors, inventors, and in-house counsel helps to provide the best patent applications and office action responses for a high quality...more

Sanofi, Sanofi-Aventis U.S., LLC V. Watson Labs. Inc., Sandoz, Inc.

by Knobbe Martens on

Federal Circuit Summaries - Before PROST, WALLACH, and TARANTO.  Appeal from the District of Delaware Summary: (1) A party may not avoid inducement based on “substantial non-infringing uses,” and (2) prosecution history...more

Statistics on the Backlog Problem and "Fast-Track" Options in Brazil

The recent proposal of automatically granting pending applications without examination is nothing but a desperate measure against a problem that has been haunting applicants and practitioners for decades. Apart from the...more

Perspectives on the PTAB Newsletter - November 2017

The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more

Global Patent Prosecution Newsletter - November 2017

An Update on Brazilian Patent Law – Emergency Backlog/Fast-Track Options and Enforcement Issues - We are delighted to have as contributors to the November Global Patent Prosecution newsletter, Ricardo Nunes and Andre...more

Preparing European Priority Applications for Stronger U.S. Patents

The current U.S. patent climate mandates a heightened focus on quality prosecution. For consumer product companies headquartered in Europe, and for those that regularly innovate there, this means preparing and filing European...more

Federal Circuit Finds NuvaRing Patent Nonobvious Without Hindsight

by Foley & Lardner LLP on

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

PTAB Designates as “Informative” Three Discretionary Denials of IPR Institution Decisions

by Knobbe Martens on

On October 24, 2017, the PTAB designated as “informative” the following three decisions that discretionarily denied institution of IPR petitions under 35 U.S.C. § 325(d). Section 325(d) provides that “the Director may take...more

The Board Gives Section 325(d) Sharp Teeth

This is the first of a three-part series discussing developments around Section 325(d). Part two will appear in our November 2017 newsletter and part three will appear in our December 2017 newsletter. Congress granted the...more

Global Patent Prosecution Newsletter - October 2017

March-in Rights and Compulsory Licensing of Biopharmaceutical Inventions - Very few topics in international intellectual property have been as controversial as compulsory licensing. In the US, consumer groups have...more

Five Things to Know About University Licensing

by WilmerHale on

Earlier this year, WilmerHale Partners Dave Gammell, Barry Hurewitz and Jeff Johnson discussed the basics of licensing and legal considerations for university licensing agreements such as unique aspects of university licenses...more

Negative Limitations in a Patent Claim – Broad or Narrow?

by Womble Bond Dickinson on

Negative limitations, using words like “not”, “without”, or “excluding” in a patent claim, understandably make patent practitioners and clients nervous. Generally, positive limitations are preferred and negative limitations...more

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