News & Analysis as of

Patent Terms Patent Applications

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

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

Dunlap Bennett & Ludwig PLLC

Extending The Life Of Your Patent

The United States Patent and Trademark Office (USPTO) has just issued a Notice of Allowance for your invention embodied in the Utility Patent Application (UPA) you filed years ago. Your initial reaction may be, ‘Finally! The...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

Morrison & Foerster LLP

Sonos v. Google Breathes New Life into Prosecution Laches Doctrine

A recent district court decision in Sonos v. Google has set forth a novel application of the prosecution laches doctrine to a patent with a post-1995 priority date. Sonos Inc. v. Google LLC, 20-06754 WHA, 2023 WL 6542320...more

BakerHostetler

Are Your Granted Patents in Danger of a Post-Grant Double Patenting Challenge? Time To Update Your Playbook in the Wake of In re...

BakerHostetler on

Here’s a familiar scenario. An applicant files a first patent application with medium-to-narrow claim coverage. The first patent application issues with some or substantial patent term adjustment (PTA) caused by one or more...more

American Conference Institute (ACI)

[Webinar] 3rd Annual Passport to Proficiency on the Essentials of Hatch-Waxman and BPCIA - October 10th - 26th, 1:00 pm EST

Gain a comprehensive understanding of Hatch-Waxman and BPCIA essentials, a critical competency for legal and business professionals in the biopharmaceutical arena. Attend ACI’s Hatch-Waxman and BPCIA Proficiency Series...more

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

Mind Your Ps and Qs, and Your PTAs Too

Last week, the Federal Circuit held that obviousness-type double patenting trumps patent term adjustment, opening the door for invalidity attacks that to date had been questionable. In re Cellect was an appeal from a...more

McDermott Will & Emery

Another Kind of Term Limit: Delay Resulting from After-Allowance Amendments Deducted from PTA

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed the US Patent & Trademark Office’s (PTO) decision on a patent term adjustment (PTA), finding that it was appropriate to deduct days from a patent term when the...more

Fish & Richardson

An Overview of Utility Patents in the United States

Fish & Richardson on

What is a utility patent? The definition of a utility patent is a patent that covers “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”...more

Williams Mullen

PODCAST: Williams Mullen's Trending Now - An IP Podcast - The Timing of Patents

Williams Mullen on

We are very pleased to announce the launch of Williams Mullen's Trending Now - An IP Podcast, a new legal podcast focused on providing innovative companies and investors with important and timely information concerning...more

Foley & Lardner LLP

After-Final Response Does Not Stop PTA Clock

Foley & Lardner LLP on

In Intra-Cellular Therapies, Inc. v. Iancu, the Federal Circuit agreed with the USPTO’s Patent Term Adjustment (PTA) calculation that charged a deduction for “applicant delay” for time after the applicant filed a first...more

McDonnell Boehnen Hulbert & Berghoff LLP

Mayo Foundation for Medical Education and Research v. Iancu (Fed. Cir. 2019)

On Monday, September 16, 2019, in Mayo Foundation for Medical Education and Research v. Iancu, the Federal Circuit affirmed a decision by the U.S. District Court for the Eastern District of Virginia affirming a determination...more

McDermott Will & Emery

“Equal to” Means “Not Exceed” when Determining Patent Term Adjustment

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found that the US Patent and Trademark Office (PTO) erred in calculating a patent term adjustment (PTA) for a patent covering an oral osmotic form of an antihypertensive drug,...more

Mintz - Intellectual Property Viewpoints

Patent Term Adjustment: The Real Meaning of Applicant Delay

On January 23, 2019, the Federal Circuit decided Supernus Pharmaceuticals, Inc. vs. Iancu and shed light on Patent Term Adjustment (PTA). PTA was established by the American Inventors Protection Act of 1999 and codified at 35...more

Jones Day

Supernus: Federal Circuit Provides Clarity on USPTO Discretion on Patent-Term Adjustment Calculations

Jones Day on

The Situation: The USPTO took a long time to issue Supernus's patent application. Although Supernus would otherwise have been entitled to significant patent term adjustment, the USPTO ruled that the accumulated term should be...more

Neal, Gerber & Eisenberg LLP

Client Alert: Federal Circuit PTA Decision Favors Applicants with Multiple Co-Pending Domestic and Foreign Applications

The Federal Circuit recently held that the USPTO’s calculation of “applicant delays” related to Patent Term Adjustment (PTA) is contrary to the plain language of the PTA Statute....more

McDonnell Boehnen Hulbert & Berghoff LLP

Supernus Pharmaceuticals, Inc. v. Iancu (Fed. Cir. 2019)

Last week, in Supernus Pharmaceuticals, Inc. v. Iancu, the Federal Circuit reversed the entry of summary judgment by the District Court for the Eastern District of Virginia, which concluded that the U.S. Patent and Trademark...more

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

Global Patent Prosecution Newsletter - December 2018: Protecting Agricultural Advances

The Green Revolution of the 20th century increased agricultural production worldwide primarily through high-yielding plant varieties. However, in order to sustainably feed the estimated 9 billion people who will inhabit the...more

McDermott Will & Emery

Benefit of Earlier Filing Date or Gaining Patent Term? Patentee Can’t Have Its Cake and Eat It Too

McDermott Will & Emery on

Affirming a Patent Trial and Appeal Board (PTAB) priority determination invalidating a patent, the US Court of Appeals for the Federal Circuit found that amending the priority claim of a parent application to delete a...more

Foley & Lardner LLP

We All Scream For ...

Foley & Lardner LLP on

Did you know there are patents on ice cream, ice pops, and other frozen confections? A search of the USPTO patent database identified 1452 granted patents with the term “ice cream” in at least one claim. What better way to...more

Bradley Arant Boult Cummings LLP

Overlooked Changes To Patent Cooperation Treaty Practice - Law360

The recent Actelion Pharmaceuticals Ltd. case brought to light a little-known quirk in how national stage patent applications affect the length of one’s patent term. That case involved a drug company losing five days of...more

Bradley Arant Boult Cummings LLP

Drug Company Loses Patent Term for “Thinking Outside the Box”

The drug company Actelion Pharmaceuticals, Ltd., recently lost a bid to increase the term of its U.S. Patent No. 8,658,675 by five days, ultimately because its patent attorney failed to check a box on the application form. ...more

McDermott Will & Emery

Counting the Days: PTA Calculated from Date National Stage Commences

Addressing the patent term adjustment (PTA) calculations under 35 USC § 154(b)(1)(A)(i)(II), the US Court of Appeals for the Federal Circuit held that an applicant must comply with the “express request” provision of § 371(f)...more

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