News & Analysis as of

Patent Terms

Rx IP Update - September 2017

by Smart & Biggar on

Federal Court of Appeal Applies Supreme Court’s Utility Test to SPRYCEL Patent - In its first decision to consider the Supreme Court of Canada’s landmark decision in AstraZeneca Canada Inc v Apotex Inc, 2017 SCC 36...more

Calculating Patent Term Adjustment: Part 2

This article is second in a series focusing on various issues related to Patent Term Adjustment for U.S. patent applications. While Part 1 is a general overview of how to calculate patent term adjustment (“PTA”), this...more

Global Patent Term Extension/Supplementary Protection Certificate Provisions

Please see list of Countries and their rules regarding offering Patent Term Extensions and Supplementary Protection Certificates. ...more

Hey Boo-Boo, Defining Terms in the Specification is a Pic-i-nic

A definition in the patent’s specification can be critical in defining the scope of the claims. According to the patent statute, the claims and specification are directed to a person of ordinary skill in the art, but it is...more

CETA Draft Regulations Published on Patent Linkage and Term Restoration – 15 Day Public Comment Period

by Smart & Biggar on

The government has published the long anticipated draft regulations regarding: - changes to the Patented Medicines (Notice of Compliance) Regulations [“PMNOC Regulations”], and - proposed Regulations to implement...more

Calculating Patent Term Adjustment: Part 1

This article is first in a series focusing on various issues related to Patent Term Adjustment. Part 1 is a general overview of how to calculate patent term adjustment, without addressing the numerous factors that can affect...more

RxIP Update - 2016 Year in Review

by Smart & Biggar on

The following are highlights of developments in Canadian life sciences intellectual property and regulatory law in 2016, updating our 2016 mid-year highlights. 1. Substantive patent law developments - Utility and...more

Court Can't Review Policy Behind Patent Term Adjustment Statute

by Foley & Lardner LLP on

In Singhal v. Lee, the U.S. District Court for the Eastern District of Virginia dismissed a complaint that challenged the Patent Term Adjustment (PTA) awarded to two patents, because the complaint failed to state a claim upon...more

Wisp of a Possibility of Gas Kit Lawsuit May Establish Declaratory Judgment Jurisdiction

In a recent case concerning propane gas kits used as an alternative fuel conversion system, the District of Massachusetts found that declaratory judgment jurisdiction exists, even though the parties in the case had entered...more

Actual Notice Requirement Presents Challenge for Collecting Pre-Issuance Damages

Most patent owners are aware that under 35 U.S.C. § 154(d), publication of a United States patent application confers provisional rights to the patent owner. The provisional rights allow an owner to collect damages for...more

Claim Is Construed In Electronics Case

by Morris James LLP on

Intellectual Ventures I, LLC v. Ricoh Americas Corporation, et al., C.A. No. 13-474 – SLR-SRF, January 7, 2016. Sleet, J. Claim construction opinion issues regarding twenty three terms from three patents....more

When Prior Terminal Disclaimers Continue to Punish Subsequent Applications: A Potential Danger in Filing an Overly-Broad Terminal...

A recent U.S. District Court decision has clarified a potential danger when filing terminal disclaimers that contain overly-broad language. The U.S. District Court for the Northern District of Illinois in Hagenbuch v. Sonrai...more

Claims Are Construed In Pharmaceutical Case

by Morris James LLP on

Sleet, J. Claim construction opinion issues regarding one term from two patents. The following term was considered: - “treatment for HVC”...more

Disputed Terms Are Construed Relating To On Demand Presentations

by Morris James LLP on

Custom Media Technologies LLC v. Comcast Cable Communications, LLC C.A. Nos. 13-1421LPS; Custom Media Technologies LLC v. Dish Network, LLC, C.A. No. 13-1424, August 10, 2015 - Stark, C. J. Claim construction opinion....more

Rep. Goodlatte Releases Report on H.R. 9

Last week, Rep. Bob Goodlatte, Chairman of the House Judiciary Committee, released a 200-page Report on H.R. 9, "The innovation Act," introduced by Chairman Goodlatte with several co-sponsors earlier this year. The bill sets...more

Rebuffing Critics, Supreme Court Re-Affirms Ban on Post-Expiration Patent Royalties

by Morrison & Foerster LLP on

Fifty years ago, in Brulotte v. Thys Co., the U.S. Supreme Court held that the collection of royalties after a patent’s expiration constitutes per se patent misuse. Brulotte has been widely criticized as economically...more

Supreme Court Upholds Brulotte Rule Prohibiting Post-Expiration Patent Royalties

by Mintz Levin on

On June 22, 2015, the Supreme Court issued its decision in Kimble v. Marvel Entertainment, LLC, upholding the rule, first announced in Brulotte v. Thys Co., 379 U. S. 29 (1964), that an agreement allowing a patent owner to...more

Supreme Court Upholds Ban on Patent Royalties After Patent Term Expiration in Kimble v. Marvel Entertainment, LLC, No. 13-720...

by Reed Smith on

On Monday, June 22, 2015, the Supreme Court reaffirmed its earlier precedent barring royalties on a patent after the patent term expires. Kimble v. Marvel Entertainment, LLC, No. 13-720 (U.S. June 22, 2015). Justice Kagan...more

Claims Are Construed In Dispute Relating To Remote Ordering Systems.

by Morris James LLP on

Stark, C.J. Markman opinion issues regarding 11 groups of disputed terms from one patent. Claim construction argument was held on April 13, 2015, followed by supplemental briefing. ...more

USPTO Issues Final Rule to Implement PTA Provisions of AIA Technical Corrections Act and Provide Optional Procedure for Requesting...

On May 15, the U.S. Patent and Trademark Office published a Federal Register notice (79 Fed. Reg. 27755) to adopt as final changes to the rules of practice implementing the patent term adjustment (PTA) provisions of section...more

Strategic Use of Terminal Disclaimer

In Amkor Technology, Inc. v. Tessera, Inc., IPR201-00242, Paper 117, (April 14, 2014), the patent owner filed a terminal disclaimer of the remainder of the patent term (which was going to expire later in the year), to force...more

Delayed Restriction Requirement Does Not Result in Patent Term Adjustment for Divisional Application

by Foley & Lardner LLP on

In Mohsenzadeh v. Lee (decided March 19, 2014), the U.S. District Court for the Eastern District of Virginia held that the Patent Term Adjustment (PTA) statute does not provide PTA to a divisional application when the USPTO...more

Patent Term Adjustment and Double Patenting

by Foley & Lardner LLP on

The March 3, 2014 edition of BNA’s Patent, Trademark & Copyright Journal® — Daily Update included an interesting article by Qing (Becky) Lin about “Strategies for Minimizing Patent Term Loss Due to Double Patenting.” I agree...more

Federal Circuit Partially Confirms Longer Patent Terms Under Exelixis and Novartis

On January 15, 2014, the U.S. Court of Appeals for the Federal Circuit confirmed that patent owners may be entitled to extended patent terms, a finding that is especially important for select pharmaceutical, biotech, and...more

Federal Circuit Decisions Result in Minor Adjustments to Patent Term Adjustment

Novartis v. Lee and Exelixis v. Lee (2013-1160, 2013-1179, 2013-1175, Fed. Cir. 2014) - Summary: For a patent application issuing after 3 years, an RCE filed at any time during prosecution will reduce patent...more

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