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Patent Litigation Patent Term Adjustment Intellectual Property Protection

A&O Shearman

Federal Circuit Provides Clarity On Proper Obviousness-Type Double Patenting References

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In Allergan USA, Inc. et al., v. MSN Laboratories Private Ltd., et al., the United States Court of Appeals for the Federal Circuit issued a precedential decision relating to obviousness-type double patenting (“ODP”) and...more

Maynard Nexsen

When Does My Patent Expire? A Quick Glance at Patent Term Adjustment Prior to the Outcome of Cellect

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The term of a U.S. utility patent extends 20 years from the date of priority filing. However, the USPTO provides a guarantee of “prompt patent and trademark office response” that may allow the term to extend beyond the 20...more

Morgan Lewis

Federal Circuit Clarifies Proper Double-Patenting Reference

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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

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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

Kilpatrick

First-filed, Later-Expiring Patent Protected from Obviousness-Type Double Patenting Post In re Cellect

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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

EDVA Upholds USPTO’s Calculation of Patent Term Adjustment

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Under the patent laws, the term of a patent may be increased for delays by the U.S. Patent and Trademark Office (USPTO) during the application process. See 35 U.S.C. § 154(b)(1). Conversely, the USPTO can reduce a patent term...more

McDermott Will & Emery

Cellect Your Weapon: Navigating Potential Arguments in the Aftermath of In re Cellect

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In In re Cellect, 81 F.4th 1216 (Fed. Cir. 2023), the US Court of Appeals for the Federal Circuit held that a later-expiring patent can be invalid for obviousness-type double patenting (ODP) in view of an earlier-expiring,...more

Ballard Spahr LLP

In re Cellect Poses an Obvious Dilemma

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In August 2023, the Federal Circuit in In re Cellect held that in evaluating unpatentability for obviousness-type double patenting (ODP) of a patent that has received patent term adjustment (PTA), the relevant date is the...more

Jones Day

Federal Circuit Denies Petition for Rehearing En Banc Filed By Cellect, LLC

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The Federal Circuit denied Cellect, LLC's petition for rehearing en banc of the In re Cellect case, which held that the expiration of a patent for obviousness-type double patenting ("ODP") purposes is the expiration date...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023)...

Cellect owned four patents with claims that were found unpatentable by the PTAB in ex parte reexaminations for obviousness-type double patenting. The patents were granted Patent Term Adjustment (“PTA”) for the Office’s delay...more

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

[Webinar] Federal Circuit IP Appeals: Summaries of Key 2023 Decisions - January 23rd, 1:00 pm - 2:00 pm EST

Directors Michael Joffre, Ph.D., William H. Milliken, Anna G. Phillips, and Richard A. Crudo will present the webinar "Federal Circuit IP Appeals: Summaries of Key 2023 Decisions" on Tuesday, January 23, 2024, at 1:00 p.m....more

Wolf, Greenfield & Sacks, P.C.

Wolf Greenfield Attorneys Preview What’s Ahead in 2024

2024 is upon us and it’s going to be another busy year for intellectual property law. In this episode of IP Talk with Wolf Greenfield, you’ll hear Wolf Greenfield attorneys from a variety of practice areas offering their...more

Akin Gump Strauss Hauer & Feld LLP

In Wake of In re Cellect, District Court Interprets Safe Harbor Statute and Finds Patent Not Invalid for Obviousness-Type Double...

The District Court for the District of Delaware recently held on summary judgment that a patent with 2,295 days of combined patent term adjustment (PTA) and patent term extension (PTE) was not invalid for obviousness-type...more

Fitch, Even, Tabin & Flannery LLP

Calculating Patent Term Extension for FDA Delay: Original Patent or Reissue Patent Issue Date?

The Federal Circuit appeal in Merck Sharp & Dohme B.V., Merck Sharp & Dohme, LLC v. Aurobindo Pharma USA, Inc. et al., concerns whether patent term extension (PTE) for regulatory delay, in particular delay for FDA drug...more

Knobbe Martens

Federal Circuit Review - August 2023

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IPR Petitioners Must Be Permitted to Respond to Claim Constructions First Proposed in Patent Owner Response - In Axonics, Inc. v. Medtronic, Inc., Appeal No. 22-1532, the Federal Circuit held that where a patent owner in...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

McDermott Will & Emery

The End Is Not So Near: Patent Term Adjustments Count in Obviousness-Type Double Patenting Determinations

Addressing for the first time how patent term adjustments (PTAs) interact with obviousness-type double patenting (ODP), the US Court of Appeals for the Federal Circuit concluded that when members of a patent family have...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

Smart & Biggar

Proposed legislation for patent term adjustment, and the interplay with CSPs

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Bill C-47, “An Act to implement certain provisions of the budget tabled in Parliament on March 28, 2023,” aka “Budget Implementation Act, 2023, No. 1” is an omnibus bill that includes proposed amendments to the Patent Act to...more

Smart & Biggar

A first look at Canada’s proposed patent term adjustment system

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Bill C-47, entitled “An Act to implement certain provisions of the budget tabled in Parliament on March 28, 2023,” had its first reading in the House of Commons on April 20, 2023. This omnibus bill includes proposed...more

Knobbe Martens

Patent Term Adjustment Under 35 U.S.C. 154(b)(1)(C)(iii) Requires Reversal of Adverse Determination of Patentability

Knobbe Martens on

Summary: When a patent claim is subject to adverse determinations of patentability first before the PTO and again after appeal, the claim is not entitled to patent term adjustment for the period of the appeal even if the...more

Morgan Lewis

Life Science International Review Q3 - Nov. 2019

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Welcome to the Q3 2019 issue of our Life Sciences International Review. This issue covers new developments within Europe, Asia, and the United States in intellectual property, regulatory, pricing, and international trade,...more

Faegre Drinker Biddle & Reath LLP

After Supernus: It’s Up to You to Keep Your Patent Alive All Its Days

Patentees may obtain additional PTA if the USPTO’s calculation of “applicant delay” includes a period of time during which the patentee could have taken “no identifiable effort” to avoid. However, the onus is entirely on the...more

McDermott Will & Emery

Intellectual Property Law Year in Review - March 2019

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In the continuously evolving world of intellectual property law, 2018 was another milestone year. The US Supreme Court and Federal Circuit continued to define key aspects of intellectual property (IP) law including: •...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

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