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Patents Double Patent

Irwin IP LLP

Double Trouble? Some Double Patenting Woes Resolved 

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Allergan USA v. MSN Laboratories Private Ltd., No. 2024-1061 (Fed. Cir. Aug. 13, 2024) - On August 13, 2024, the Federal Circuit reversed a district court’s decision that a patent was invalid for obviousness-type double...more

Cooley LLP

Federal Circuit Limits In re Cellect, Preserving PTA for First-Filed, First-Issued Patents Within a Family

Cooley LLP on

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

Morgan Lewis

Federal Circuit Clarifies Proper Double-Patenting Reference

Morgan Lewis on

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

Troutman Pepper

Federal Circuit Decision Clarifies Obviousness-Type Double Patenting and Patent Term Adjustments in Allergan v. MSN Laboratories

Troutman Pepper on

On August 13, the Federal Circuit issued a precedential ruling in Allergan v. MSN Laboratories (Case No. 24-1061). This decision reversed the District of Delaware's application of the Federal Circuit precedent in In re:...more

Wolf, Greenfield & Sacks, P.C.

Allergan ‘First’ Exception to Cellect ODP Scenarios

In a highly anticipated decision in Allergan v. MSN Labs., the Federal Circuit held yesterday that claims in a first-filed, first-issued, later-expiring patent cannot be invalidated for double patenting by claims in a...more

White & Case LLP

Federal Circuit Limits the Application of Obviousness-Type Double Patenting for Patents in the Same Family

White & Case LLP on

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

Kilpatrick

First-filed, Later-Expiring Patent Protected from Obviousness-Type Double Patenting Post In re Cellect

Kilpatrick on

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

MoFo Life Sciences

Federal Circuit Clarifies Scope Of Obviousness-Type Double Patenting In Allergan USA V. MSN Laboratories

MoFo Life Sciences on

On August 13, 2024, the U.S. Court of Appeals for the Federal Circuit issued a welcomed decision to patentees in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061 (Fed. Cir. 2024) clarifying the scope of...more

Troutman Pepper

New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast

Troutman Pepper on

Please join our Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. In this episode, Troutman Pepper Partners Andy...more

Dickinson Wright

Terminal Disclaimer Rule Proposed to Balance Innovation and Competition

Dickinson Wright on

The United States Patent and Trademark Office (“USPTO”) periodically evaluates the delicate balance of the U.S. patent system to protect innovation without excessively stifling competition. U.S. patents give patent owners the...more

Goodwin

The USPTO Proposes a Radical Change to Terminal Disclaimer Practice: You Have an Opportunity to Comment

Goodwin on

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking that, if enacted, would tie the enforceability of every claim of a patent subject to a terminal disclaimer to the...more

Sunstein LLP

USPTO Proposes New Rules on Terminal Disclaimers: A Potential Setback for Patentees

Sunstein LLP on

The United States Patent and Trademark Office (USPTO) recently proposed a significant change to the rules governing terminal disclaimers. The USPTO says that the rule change would “promote innovation and competition,” but is...more

Locke Lord LLP

Former USPTO Directors and Officials ‎Call for Withdrawal of USPTO Proposed Rule on Continuations ‎and Terminal Disclaimers (89 FR...

Locke Lord LLP on

In the Notice, the USPTO proposed adding a new requirement for acceptable terminal disclaimers to obviate nonstatutory double patenting. The stated goal for this rule change is “to promote competition by lowering the cost of...more

Miller Canfield

Strong Headwinds for the USPTO’s Terminal Disclaimer Proposal

Miller Canfield on

The United States Patent and Trademark Office (USPTO) is facing vigorous backlash to its proposal to change terminal disclaimer practice used in patent applications and, not so subtly, discourage the use of continuation...more

McDonnell Boehnen Hulbert & Berghoff LLP

Former Directors Request Rescission of Proposed Rule Change

As discussed previously on this blog (see "USPTO Proposed Rule Change to Terminal Disclaimer Practice" and "The USPTO's Proposed Terminal Disclaimer Rule: A Litigator's Perspective") and elsewhere, the U.S. Patent and...more

WilmerHale

PTAB/USPTO Update - June 2024

WilmerHale on

Patent and Trademark Public Advisory Committees, 89 FR 44634 (May 21, 2024) (“seeking nominations for up to three members of its Patent Public Advisory Committee (PPAC) to advise the Director of the USPTO on patent policy,...more

Wolf, Greenfield & Sacks, P.C.

[Webinar] Mid-Year Litigation and PTAB Review - June 26th, 9:00 pm - 10:00 pm ET

Join Wolf Greenfield for a mid-year review of litigation and PTAB trends at 12:00pm ET or 9:00pm ET. This webinar will cover: 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping,...more

Wolf, Greenfield & Sacks, P.C.

[Webinar] Mid-Year Litigation and PTAB Review - June 26th, 12:00 pm - 1:00 pm ET

Join Wolf Greenfield for a mid-year review of litigation and PTAB trends at 12:00pm ET or 9:00pm ET. This webinar will cover: 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping,...more

Goodwin

The Appeals Review Panel’s In Re Xencor Decision: The USPTO Provides Its Position on Written Description and Means-Plus-Function...

Goodwin on

On May 17, 2024, an Appeals Review Panel (ARP) of the United States Patent and Trademark Office (“USPTO”) released its decision in Ex parte Chamberlain (referred to in Federal Circuit proceedings as In re Xencor;...more

K&L Gates LLP

USPTO Considering Changes to Enforceability of Patents Subject to a Terminal Disclaimer

K&L Gates LLP on

On 10 May 2024, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking aimed at changing the current practices surrounding terminal disclaimers. The proposed change could have...more

Polsinelli

USPTO Proposes Rule Adding Conditions of Enforceability to Patents Tied to Terminal Disclaimers

Polsinelli on

On Friday, May 10, 2024, the USPTO issued a notice of proposed rulemaking in the Federal Register directed at amending the rules of practice to add a requirement for terminal disclaimers filed to overcome rejections for...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

United States Patent and Trademark Office Proposes Changes to Terminal Disclaimer Practice

On May 10, 2024, the United States Patent and Trademark Office (“USPTO”) published a notice of proposed rulemaking in the Federal Register that could dramatically impact prosecution practices, especially for those...more

Fenwick & West LLP

USPTO Proposes Major Change to Terminal Disclaimer Practice

Fenwick & West LLP on

On May 9, the USPTO released a Notice of Proposed Rulemaking for significant changes to terminal disclaimers. The USPTO suggests adding a new requirement that applicants can overcome an obviousness-type double patenting...more

Wilson Sonsini Goodrich & Rosati

USPTO Proposes New Requirement for Terminal Disclaimers That Amounts to a Significant Change from Current Practice

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking to add a new requirement for terminal disclaimers filed to obviate nonstatutory double patenting rejections to the...more

Morgan Lewis

USPTO Proposes New Rule on Terminal Disclaimers

Morgan Lewis on

The US Patent and Trademark Office (USPTO) recently proposed a new rule for filing terminal disclaimers to overcome obviousness-type double patenting rejections. If adopted, the rule will likely spur patent applicants to...more

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