News & Analysis as of

Patents Proposed Rules

Jones Day

PTAB Announces a Bifurcated Process for Consideration of IPR and PGR Petitions

Jones Day on

A new interim process for the acting director to exercise discretion as to whether to institute an inter partes review ("IPR") or a post-grant review ("PGR") was announced on March 26, 2025, in which discretionary...more

Vorys, Sater, Seymour and Pease LLP

New USPTO Processes Put in Place Regarding PTAB Institution Decisions

On March 26, 2025, the U.S. Patent and Trademark Office (USPTO) announced new interim procedures for handling discretionary denials of post-grant proceedings before the Patent Trial and Appeal Board (PTAB).  These changes are...more

Axinn, Veltrop & Harkrider LLP

Pounding the Compounders: FDA’s “No Compound” Lists

Novo Nordisk recently made headlines petitioning FDA to stop the compounding of its blockbuster GLP-1 products so it can sell its patented semaglutide drugs exclusively. Compounding is the practice of creating new drug...more

Womble Bond Dickinson

USPTO’s Proposed Terminal Disclaimer Practice: What Happened and What Comes Next?

Womble Bond Dickinson on

On May 10, 2024, the United States Patent and Trademark Office (“USPTO”) published a new proposed rule that would require when a patent applicant submits a terminal disclaimer to obviate non statutory double patenting that...more

Foley & Lardner LLP

USPTO Drops Proposed Rules on Terminal Disclaimers

Foley & Lardner LLP on

Earlier this year, the U.S. Patent and Trademark Office (USPTO) proposed a sweeping set of rules imposing new requirements on terminal disclaimers filed to overcome obviousness-type double patenting (OTDP) rejections, and...more

Morris, Manning & Martin, LLP

USPTO Abandons Double Patenting Rule: A Victory for Continuation Strategy

The United States Patent and Trademark Office (USPTO) has withdrawn its controversial proposal to amend the rules on terminal disclaimers and double patenting. This decision marks a significant triumph for advocates of...more

McDermott Will & Emery

PTO Withdraws Proposed Rule on Terminal Disclaimer Changes

McDermott Will & Emery on

The US Patent & Trademark Office (PTO) withdrew its proposed rule that suggested major changes to its terminal disclaimer practice. 89 Fed. Reg. 96152 (Dec. 4, 2024)....more

Procopio, Cory, Hargreaves & Savitch LLP

Threat to Many Patent Portfolios Fades as USPTO Withdraws Controversial Proposed Rule

Facing strong opposition from a rare alliance of the pharma and tech industries as well as past agency leaders, the U.S. Patent and Trademark Office (USPTO) has withdrawn a proposed new rule directed at Terminal Disclaimer...more

Dinsmore & Shohl LLP

Christmas Came Early – USPTO Withdraws Proposed Rule on Terminal Disclaimers

Dinsmore & Shohl LLP on

Patent owners with robust continuation filing strategies can breathe a sigh of relief as the United States Patent and Trademark Office (“USPTO”) has withdrawn a proposed rule, which would have weakened patents linked to one...more

Fuerst Ittleman David & Joseph

Compounded GLP-1 Drugs: is the Party Over? These Are the Legal and Regulatory Issues for Game Changing Weight Loss Products and...

Author’s Note: This is an updated version of the post to our blog dated October 30, 2024. Later that day, FDA announced the resolution of Novo Nordisk’s semaglutide shortage, which altered the conclusion of our original post...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Cellect in View of Supreme Court's "Long Conference" – Part II

In view of the Supreme Court's "long conference" on September 30th, it seems timely to review the arguments, pro, con, and amicus briefs submitted to the Court asking for certiorari over the Federal Circuit's In re...more

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

USPTO Issues Final Rule on Director Review of PTAB Decisions

On October 1, 2024, the USPTO published a new final rule, Rules Governing Director Review of Patent Trial and Appeal Board Decisions. 89 Fed. Reg. 79744 (October 1, 2024). The new rule codifies many aspects of the PTAB’s most...more

Flaster Greenberg PC

Chevron’s Demise and Its Effect on Intellectual Property & Its Governing Agencies

Flaster Greenberg PC on

For many, the demise of Chevron – the doctrine by which agencies enjoy deference in interpreting ambiguous statutes – has long been coming. While Chevron’s demise, and the resulting resurgence of Skidmore, is likely to lead...more

Farella Braun + Martel LLP

Proposed Patent Bills To Be Considered Next Week by the Senate Judiciary Committee

We've been closely monitoring two proposed bills regarding patent law—the Patent Eligibility Restoration Act (PERA) and the PREVAIL Act. The Senate Judiciary Committee would have considered both bills yesterday, but they...more

Proskauer Rose LLP

FTC Focus: What Access To Patent Settlements Would Mean

Proskauer Rose LLP on

The Federal Trade Commission has pursued aggressive and creative expansion of its antitrust enforcement efforts under the Biden administration, and the pharmaceutical industry is no exception. Indeed, in a recent interview,...more

WilmerHale

PTAB/USPTO Update - August 2024

WilmerHale on

On July 7, the Senate passed a resolution “[r]ecognizing the importance of trademarks in the economy and the role of trademarks in protecting consumer safety, by designating the month of July as ‘National Anti-Counterfeiting...more

Strafford

[Webinar] Obviousness-Type Double Patenting and USPTO Proposed Rules for Terminal Disclaimers - Recent Court Treatment,...

Strafford on

This CLE webinar will guide patent counsel on obviousness-type double patenting (ODP), including the recent decisions that have relied on Cellect. The panel will also discuss the USPTO's proposed terminal disclaimer rule and...more

Troutman Pepper Locke

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

Troutman Pepper Locke 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

Erise IP

Eye on IPRs, May 2024: Lululemon Earns Partial IPR Win Against Nike; USPTO Issues Proposed IPR Rules

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: PTAB issues initial decisions on Lululemon-Nike IPRs - Lululemon, whose...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

Womble Bond Dickinson

How Are The USPTO’s Proposed Rule Changes For Terminal Disclaimers Problematic?: Let Me Count The Ways

Womble Bond Dickinson on

On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (Notice) proposing changes to terminal disclaimer (TD) practice....more

69 Results
 / 
View per page
Page: of 3

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide