Third Party Observation in Patent Prosecution in China
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
Takeaways: 1. Nontraditional and unique issue petitions are common for patent owners to properly prosecute reexamination proceedings. 2. Well-drafted petitions influence outcomes and preserve PTAB, District Court, and/or...more
One way that reexamination advantageously differs from other administrative post-grant review processes is the absence of word or page counts as a limiting factor in presenting the challenge, here substantial new questions of...more
Takeaways: - Patent owner requested reexaminations are not an admission of claim unpatentability. - Patent owners can and should control the reexamination request narrative. Patent owners must consider the pros and...more
From time to time, a patent owner may become aware of an error in her patent. Some errors may be minor, and the patent owner may seek correction of minor errors via a USPTO Certificate of Correction (CoC). With a CoC, the...more
Long before the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB) patent revocation proceedings, the patentability of one or more claims of any patent could be reviewed via Ex Parte Reexamination...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
Hosted by American Conference Institute, the 20th Annual Paragraph IV Disputes & the 40th Anniversary of the Hatch-Waxman Act returns for another exciting year with curated programming that will take a retrospective look at...more
In our annual review of developments in Canadian patent law, we considered over 60 patent decisions reported last year. This article highlights statutory changes and a selection of interesting points addressed in the reported...more
In practice, companies regularly search the competitors's related published patent applications to determine whether they pose a threat to their own market activities. If necessary, companies can consider using the third...more
In a recent decision, Pfizer Canada ULC v Uniqure Biopharma BV, 2023 FC 629, the Federal Court dismissed uniQure’s motion to stay Pfizer’s action to impeach uniQure’s patent pending completion of re-examination of the patent...more
Inter partes reviews (IPRs), ex parte reexaminations and post-grant reviews (PGRs) are all post grant proceedings offered by the United States Patent and Trademark Office (USPTO) that allow parties to challenge the validity...more
On February 17, 2023, the US Patent & Trademark Office (PTO) announced the launch of the new Trademark Decisions and Proceedings Search Tool. This tool allows users to filter and search expungement and reexamination...more
When a patentee responds to the challenge in the patent invalidation proceedings in China, sometimes it is necessary to amend the claims in order to obtain a decision from the CNIPA to maintain the validity of the patent...more
On April 26, 2021, the Federal Court granted Teva’s motion for a stay of the re-examination proceeding commenced by Pharmascience in respect of Canadian Patent No. 2,760,802 (802 patent) relating to glatiramer acetate (Teva’s...more
The Federal Circuit had a slow week, issuing only 8 decisions (just 3 of them precedential). But among those was an interesting case with a question of first impression about the doctrine of equitable intervening rights. ...more
The patent claim survival rate before the Patent Trial and Appeal Board continues to strongly favor petitioners. Accordingly, motions to amend the challenged claims have been growing among patent owners in inter partes...more
In The Sherwin-Williams Company v. PPG Industries, Inc., 2-17-cv-01023 (WDPA 2021-01-21, Order), the court had to decide whether Plaintiff The Sherwin-Williams Co. (“Sherwin”) should be bound by its prior admission to the...more
In April, the Supreme People’s Court of China published a draft for comment for “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving Patent Authorization and...more
This article discusses aspects of ex parte appeals of patent applications before the China National Intellectual Property Administration (CNIPA). A patent applicant may appeal (submit a re-examination request) an examiner’s...more
The US Court of Appeals for the Federal Circuit denied a petition for panel rehearing regarding the constitutionality of decisions issued by the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board...more
Virnetx Inc. v. Cisco Systems, Inc., Appeal No. 2019-1671 (Fed. Cir., May 13, 2020). Inter partes reexamination was a non-trial procedure that allowed third parties to participate in patent reexamination, and has now been...more
In Supernus Pharmaceuticals, Inc. v. Iancu, the Federal Circuit held that the USPTO cannot charge a Patent Term Adjustment (PTA) deduction for “applicant delay” during a period when the applicant “could have done nothing to...more
In the latest round of the Apple/VirnetX saga, the US Court of Appeals for the Federal Circuit held to its precedents in determining when 35 USC § 317(b) estoppel is triggered against inter partes re-examinations. VirnetX...more
Recently, the Chinese Patent Reexamination Board (PRB) published a written decision where patentee Chen He’s Electric Unicycle patent (CN102275621B) was invalidated based, partly, on a failure to establish sufficient domestic...more