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Patents Patent Applications Patent Validity

Neal, Gerber & Eisenberg LLP

Federal Circuit Weighs in Again on Obviousness-Type Double Patenting to Limit In re Cellect and Preserve PTA for First-Filed,...

Obviousness-type double patenting (ODP), a judicially-created ground of patent invalidity, has become the subject of intense interest after the Federal Circuit issued two decisions refining the application of the doctrine in...more

Sunstein LLP

The USPTO Giveth and Taketh Away

Sunstein LLP on

According to statute, if prosecution of a patent application is delayed due to the fault of the United States Patent and Trademark Office (“USPTO”), additional term is added to the life of the patent when it issues. This is...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

Manatt, Phelps & Phillips, LLP

The Presumption of Validity Is Dead; Long Live the Presumption of Validity?

Executive Summary - The patent application examination requirement is statutory based rather than a Constitutional requirement. For instance, from 1793 to 1836, the U.S. Patent System operated on a registration system...more

Mintz - Intellectual Property Viewpoints

Picture Claims as an Effective Patent Strategy: Top 10 Reasons to Precisely Tailor Your Patent Claim

A “picture” claim refers to a patent claim precisely tailored to track a particular product’s important advantages and features. When drafting a patent application, one should describe various embodiments of the invention and...more

American Conference Institute (ACI)

[Event] C5’s 16th Annual Forum on Pharma & Biotech Patent Litigation in Europe - May 23rd - 24th, Amsterdam, Netherlands

Hosted by C5, the 16th Annual Forum on Pharma & Biotech Patent Litigation in Europe returns 23-24 May, at the DoubleTree by Hilton Amsterdam Central Station, Amsterdam with curated programing for you to gain the knowledge and...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Patent Invalid Due to Trade Show Demonstration More Than One Year Before Filing Date

In a cautionary tale for inventors participating in trade shows and other non-confidential presentations, on February 15, 2023, the U.S. Court of Appeals for the Federal Circuit affirmed a district court decision invalidating...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

American Conference Institute (ACI)

[Event] Paragraph IV Disputes Conference - November 9th - 10th, New York, NY

Join the conference that the “who’s who” of Hatch-Waxman litigators have designated as the forum which sets the standards for Paragraph IV practice. ACI’s Paragraph IV Litigation Conference is returning LIVE & IN-PERSON to...more

Jones Day

Patent Need Not Be Valid To Be 102(e)(pre-AIA) Prior Art

Jones Day on

This blog has previously discussed the Federal Circuit’s decision in Becton, Dickinson and Co. v. Baxter Corp. Englewood, — F.3d —, No. 2020-1937, 2021 WL 2176796 (Fed. Cir. May 28, 2021).  See Telepharma Disconnect:  Federal...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

Morgan Lewis

Patent Interferences

Morgan Lewis on

A patent interference is an inter partes proceeding to determine which party was the first to invent commonly claimed subject matter. An interference is also a viable procedure for challenging the validity of an issued patent...more

Mintz - Intellectual Property Viewpoints

Doctrine of Assignor Estoppel to be Reviewed by U.S. Supreme Court

On January 8, 2021, the U.S. Supreme Court agreed to hear a case calling for it to abolish or limit the doctrine of assignor estoppel. See Minerva Surgical, Inc. v. Hologic, Inc., et al., No. 20-440, 2021 WL 77248 (U.S. Jan....more

Smart & Biggar

Protecting innovations through patent due diligence and FTO analysis

Smart & Biggar on

Innovations that arise in competitive markets with a well-developed and rapidly evolving intellectual property space often integrate several pre-existing technologies from various scientific and engineering disciplines. If...more

Goodwin

The PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...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

McDonnell Boehnen Hulbert & Berghoff LLP

Federal Circuit Invalidates Edison's Light Bulb Patent

August 27, 1890 - WASHINGTON D.C. The ups and downs of Mr. Thomas A. Edison's inventions related to electrical lighting continue. After his U.S. Patent No. 223,898 for an "Electric Lamp" was found to be valid in the...more

McDermott Will & Emery

New French PACTE Law – How Is It Affecting French IP Law?

McDermott Will & Emery on

The Action Plan for Business Growth and Transformation of Companies (PACTE) law, which was promulgated on 22 May 2019, includes provisions affecting several areas of French intellectual property law....more

Jones Day

Consequences of the French PACTE Act in Terms of Patent Rights

Jones Day on

The Background: The Action Plan for the Growth and Transformation of Enterprises Act ("PACTE Act") adopted on April 11, 2019 and promulgated on May 23, 2019, brings three important changes aimed at strengthening French...more

Patterson Belknap Webb & Tyler LLP

Win or Go Home? Standing to Appeal PTAB Decisions Upholding Patentability to the Federal Circuit Before Submitting a Biosimilar...

Biosimilar developers have been aggressive in filing petitions for inter partes reviews (IPRs) of biologics patents before the Patent Trial and Appeal Board (PTAB), many of them preceding the filing of a marketing...more

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

Reverse or Remand: What is the proper remedy on appeal where the Board fails to carry its burden?

Is there a growing split in the Federal Circuit on the proper remedy where the Patent Trial and Appeal Board (“Board”) fails to carry its burden? The recent precedential decision of In re Hodges, __ F.3d __, 2018 WL 817248...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Core Wireless v. LG affirms the denial of summary judgment as to unpatentable subject matter, ruling that the asserted claims are directed to an improved user interface for computing devices, not to the abstract idea of an...more

Knobbe Martens

In Helsinn Healthcare, the Federal Circuit Offers Guidance on the On-Sale Bar under the AIA

Knobbe Martens on

The sale of a product prior to filing a patent application, or “on-sale bar,” has long been a potential barrier to obtaining a patent in the United States. Especially in the biotechnology space, which can involve a long...more

Knobbe Martens

Matching Claim Language with Label Language Ensnares Infringers

Knobbe Martens on

On January 12, 2017, the U.S. Court of Appeals for the Federal Circuit issued an opinion affirming the judgement that Eli Lilly’s U.S. Patent No. 7,772,209 (“the ’209 Patent”) was valid and infringed under the doctrine of...more

McDonnell Boehnen Hulbert & Berghoff LLP

UCB, Inc. v. Yeda Research and Development Co. (Fed. Cir. 2016)

On September 08, 2016, in UCB, Inc. v. Yeda Research and Development Co., the Federal Circuit affirmed the determination by the District Court for the Eastern District of Virginia that UCB's Cimzia® brand antibody does not...more

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