Patents, Disclosure, Patent Trial and Appeal Board

“First Available” Date Alone Is Insufficient Evidence of Disclosure

Jones Day on 12/13/2024

The Patent Trial and Appeal Board (“PTAB”) denied institution in an inter partes review (“IPR”), finding that an online store’s assertion regarding when a product was “first available” is by itself insufficient evidence of...more

Federal Court Invalidates Dosing Patent Based On Clinical Trials Disclosure

MoFo Life Sciences on 6/10/2024

As an essential component of the drug development process, human clinical trials assist in determining whether a given drug will serve its intended purpose, but patent applicants should consider disclosure of such trials in...more

Searching for Claim Support in a Patent Specification? You Better Blaze a Trail

Bradley Arant Boult Cummings LLP on 4/20/2023

Last month the Federal Circuit affirmed a PTAB inter partes review (IPR) decision finding that the University of Minnesota’s patent claim directed to the anti-cancer drug sofosbuvir was not adequately supported by the written...more

Key Rules and Cases for Patent Practitioners Working on AI Patent Applications

Sheppard Mullin Richter & Hampton LLP on 10/12/2022

On September 22, 2022, the U.S. Patent and Trademark Office (USPTO) directed patent practitioners to current case law and sections of the Manual of Patent Examining Procedure (MPEP) as reminders as the patent practitioners...more

Ranging Beyond The Written Description Requirement

Foley & Lardner LLP on 7/17/2018

Practitioners with an international patent practice generally view the U.S. written description requirement as more liberal than similar requirements in other jurisdictions, especially the European Patent Office. That said,...more

Fresh From the Bench: Latest Federal Circuit Court Cases

Schwabe, Williamson & Wyatt PC on 5/8/2018

Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., Appeal Nos. 2016-2121, -2208, -2235 (Fed. Cir. 2018)?- In an appeal from a jury trial, the Federal Circuit addressed numerous issues...more

Patent Office Ethics Developments: Patent Agent Privilege and Duty of Disclosure

McDonnell Boehnen Hulbert & Berghoff LLP on 3/17/2017

Seeking to end years of little clarity on two key ethical issues for practitioners, the Patent Office has proposed two new rules of practice. The first rule would allow parties to invoke privilege in inter partes proceedings...more

Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015)

McDonnell Boehnen Hulbert & Berghoff LLP on 10/28/2015

It is well accepted that in order to establish that a patent is entitled to claim priority to a previously filed provisional application, it must be shown that the claims of the patent have written description support in the...more

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