News & Analysis as of

Patents Patent Applications Double Patent

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

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

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

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

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

Wolf, Greenfield & Sacks, P.C.

USPTO Proposed Terminal Disclaimer Can Terminate Patents

The USPTO on May 10, 2024, issued a notice of proposed rulemaking (NPRM) raising the requirements for accepting a Terminal Disclaimer (TD) to obviate obviousness-type double patenting (ODP). Specifically, the newly proposed...more

Mintz - Intellectual Property Viewpoints

A Continuation Application is an Implicit Admission of Obviousness-Type Double Patenting When Filed from a Parent Patent

Filing a continuation application from a parent patent is an implicit admission that obviousness-type double patenting (ODP) applies to the resulting continuation patent. A Terminal Disclaimer in the continuation patent over...more

American Conference Institute (ACI)

[Event] 22nd Advanced Summit on Life Sciences - May 29th - 30th, New York, NY

Hosted by American Conference Institute, the 22nd Advanced Summit on Life Sciences Patents returns for another exciting year with curated programming that will provide practical insights on how to maximize your patent term...more

McDermott Will & Emery

Same Applicant, Similar Claims Support Obviousness-Type Double Patenting Rejection

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board obviousness-type double patenting rejection, finding that an unexpected mechanism of action does not render the known use of a known...more

McDonnell Boehnen Hulbert & Berghoff LLP

On Alice Rejections per USPTO Technical Center

The U.S. Patent and Trademark Office (USPTO) organizes its examining corps into technical centers (TCs).  Each TC is dedicated to one or more general technical fields.  In some cases, one TC may include two or more unrelated...more

Katten Muchin Rosenman LLP

Whether Obviousness Type Double Patenting Can Be Used to Invalidate Patents That Expire Later Because of Patent Term Adjustment

We write to advise you on an issue currently before the Federal Circuit in a case of first impression, namely whether a later-filed, earlier-expiring patent can be used as a reference for obvious-type double patenting (OTDP)...more

Jones Day

Legislative Intent Trumps Legitimate Interest: EPO Confirms Double Patenting as a Ground for Refusal

Jones Day on

The EPO confirmed that a European patent application can be refused on the basis of double patenting under Articles 97(2) and 125 EPC, if a patent with the same effective date has already been granted for the same subject...more

Mintz - Intellectual Property Viewpoints

Obviousness-Type Double Patenting and Divisional Applications in Canada

Obviousness-type double patenting (“OTDP”) arises when two or more patents or applications include claims that, while not being identical, are not patentably distinct from each other. In the U.S., OTDP rejections can be...more

Smart & Biggar

Double Patenting: A comparative guide between U.S. & Canadian practice

Smart & Biggar on

Double patenting has become a common challenge to patent validity in Canada since the decision rendered by the Supreme Court of Canada in Whirlpool Corp. v Camco Inc in 2000. The Canadian double patenting doctrine is similar...more

Smart & Biggar

Three key differences between U.S. and Canadian patent law that can affect patent filing strategies in Canada

Smart & Biggar on

Though there are many similarities between U.S. and Canadian patent law, the following significant differences can affect the key decision of whether to file in Canada. 1. Grace period time limit - Sections 28.2 and...more

McDonnell Boehnen Hulbert & Berghoff LLP

News from Abroad -- Double Patenting: Will Prohibition End at Last?

The approach of the European Patent Office (EPO) to prohibition of double patenting is well established and may, at a first glance, also seem well founded. Originally published in D Young & Co. on June 1, 2019....more

Jones Day

Extension of Protection for Up to One Year Possible? New Referral on Double Patenting

Jones Day on

The BoA has been divergent regarding whether in an internal priority situation, the applicant would have a legitimate interest in a second patent protecting the same subject matter. ...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Partially Clarifies Obviousness-Type Double Patenting Law in Two Opinions Released the Same Day

The Court of Appeals for the Federal Circuit issued two opinions on December 7 that address two unsettled questions relating to obviousness-type double patenting (OTDP). These issues are of particular interest to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical Inc. (Fed. Cir. 2018)

On Friday, December 7th, the Federal Circuit handed down two opinions concerning the proper application of the judicially created doctrine of obviousness-type double patenting (OTDP). The first, Novartis AG v. Ezra Ventures...more

Troutman Pepper

Obviousness-Type Double Patenting Just Became Less of a Problem for Innovators

Troutman Pepper on

The Federal Circuit recently issued a pair of decisions concerning the Gilead doctrine, which allowed later-issuing patents to be obviousness-type double patenting (ODP) references against earlier-issuing patents....more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - SimpleAir, Inc. v. Google LLC, Appeal No. 2016-2738 (Fed. Cir. 2018) - In SimpleAir, Inc. v Google LLC, the Federal Circuit vacated a district court’s motion to dismiss pursuant to Rule...more

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