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Intellectual Property Protection Patents Double Patent

Irwin IP LLP

Double Trouble? Some Double Patenting Woes Resolved 

Irwin IP LLP on

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

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

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

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

BakerHostetler

Are Your Granted Patents in Danger of a Post-Grant Double Patenting Challenge?

BakerHostetler on

Patent owners need to be wary of the pitfalls when attempting to procure follow on patents to an existing technology. It could turn out your own patents could be used against others in the portfolio to render them invalid or...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

Dickinson Wright

Double Patenting in Canada

Dickinson Wright on

Similar to other jurisdictions, a patent in Canada is granted for one invention only. Accordingly, in instances where multiple inventions are claimed in a single application, it may be necessary to parse out the inventions...more

Manatt, Phelps & Phillips, LLP

Double Trouble for Double Patenting or When Does My Patent Expire?

The Federal Circuit recently clarified the interplay between obvious-type double patenting (ODP) and patent term adjustments (PTA) granted pursuant to 35 U.S.C. § 154(b). In In re Cellect, the Federal Circuit explained that...more

Irwin IP LLP

Obviousness-Type Double Patenting is Alive and Well 

Irwin IP LLP on

In a recent decision, the Court of Appeals for the Federal Circuit (“CAFC”) resolved district court splits regarding obviousness-type double patenting (“ODP”) by holding that ODP is still a valid challenge to patent validity...more

Vedder Price

In re Cellect: The Federal Circuit Alters Terminal Disclaimer Strategy

Vedder Price on

The Federal Circuit recently in In re Cellect, invalidated a series of patents based on obviousness-type double-patenting (ODP), finding that term-adjusted patents (PTA) in the same family are invalid under ODP in the absence...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

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

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

Knobbe Martens

“Term Act of 2019” Proposes Shifting Patent Challenge Burdens to Branded Companies

Knobbe Martens on

A new bill introduced in Congress last week may limit the ability of branded pharmaceutical companies to extend the period of exclusivity products beyond the term of a single patent. The bill, titled “Terminating the...more

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