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Patent Term Extensions

Foley & Lardner LLP

USPTO Publishes Final Fees for 2025

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The USPTO has published its final rule setting patent fees that will take effect January 19, 2025. The final rule steps back from some of the new fee structures proposed in April 2024, but still could have a significant...more

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

USPTO Finalizes Fee Increases for 2025: What to Expect in the New Year and What to do Now

The United States Patent and Trademark Office (USPTO) announced today the finalized fee increases taking effect on January 19, 2025. While applicants can still expect significant increases in certain areas, some proposed fee...more

Mintz - Intellectual Property Viewpoints

Why companies may want to accelerate marketing approval for their patented drugs in Canada

Patent Term Extensions (e.g., in the United States), Supplementary Protection Certificates (e.g., in Europe), and other similar extensions compensate the owner of a patent covering certain approved medical products for the...more

DLA Piper

Effect of Patent Term Extensions on Obviousness-type Double Patenting

DLA Piper on

The US Court of Appeals for the Federal Circuit issued its opinion in Allergan USA, Inc. v. MSN Laboratories Private Ltd., No. 24-1061 (Fed. Cir. 2024), holding that “a first-filed, first-issued, later-expiring claim cannot...more

Foley Hoag LLP

Supreme Court Declines Certiorari Review in Cellect

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On October 7, 2024, the Supreme Court declined to hear Cellect LLC v. Vidal, No. 23-1231. The case has been followed closely by patent professionals ever since the Federal Circuit upended the judicially-created doctrine of...more

AEON Law

Patent Poetry: Patent Office Says Coding Error Affected PTA Determinations

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The US Patent and Trademark Office (USPTO) has announced that a recent update to its software “introduced a coding error into the patent term adjustment software the agency uses to perform patent term adjustment (PTA)...more

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

Cellect and Allergan: Obviousness-Type Double Patenting (ODP) in Reexamination and Reissue

Takeaways: 1. ODP in reexamination and reissue remains unpredictable despite Allergan 2. Patent Owners should carefully review ODP rejections to ensure they are proper Obviousness-type double patenting (ODP) is a legal...more

Goodwin

FDA Platform Technology Draft Guidance Highlights Utility of Obscure Patent Term Extension Provision

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As discussed in a prior Goodwin Alert, the US Food and Drug Administration (FDA) recently released Draft Guidance for designating a platform technology for drug development pursuant to § 560k of the Federal Food, Drug, and...more

McDermott Will & Emery

It May Be a Hairy Situation, but Detailed Declaration Sufficient Evidence of Prior Use

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s refusal to register a mark, finding that an unchallenged, detailed declaration by the opposing company’s director sufficed as...more

WilmerHale

PTAB/USPTO Update - May 2024

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On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of...more

Foley & Lardner LLP

Which Significant USPTO Fee Increases Might We See in 2025?

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If the U.S. Patent and Trademark Office (USPTO) is going to implement fee changes in January 2025, we should see a Federal Register Notice detailing the proposed fees soon. The USPTO started this round of fee-setting in April...more

Womble Bond Dickinson

Navigating the Implications of In re Cellect: What You Need to Know About Patent Term Adjustment & Obviousness-Type Double...

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On January 19, 2024, the Court of Appeals for the Federal Circuit issued an order denying the Petition for Rehearing En Banc in the much awaited In re Cellect matter. The mandate of the court issued today....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

Venable LLP

USPTO Rejects "Contingent" Terminal Disclaimer

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On January 18, 2024, the USPTO rejected a "contingent" terminal disclaimer filed by Acadia Pharmaceuticals Inc. (Acadia) for a patent it owns that is being challenged in a pending litigation as invalid for obviousness-type...more

McDonnell Boehnen Hulbert & Berghoff LLP

Living with Cellect – Three Best Practices

On Friday, January 19, 2024, the Court of Appeals for the Federal Circuit issued an Order refusing to rehear In re Cellect, LLC en banc. This likely means that the holding in In re Cellect will represent the law regarding...more

Linda Liu & Partners

Noteworthy Points in the Rules for the Implementation of China’s Patent Law 2023

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Recently, the new Rules for the Implementation of Patent Law (hereinafter referred to as "the Rules") has been approved and promulgated by the State Council, and will come into force on January 20, 2024. There are many...more

Foley & Lardner LLP

How is Patent Term Extension Calculated For a Reissued Patent?

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Share on Twitter Print Share Back to top The Patent Term Extension (PTE) provisions of 35 U.S.C. 256 were enacted as part of the Drug Price Competition and Patent Term Restoration Act of 1984. PTE partially compensates...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

Cooley LLP

Federal Circuit’s In re Cellect Decision Deals Blow to Patent Term Adjustment

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The US Court of Appeals for the Federal Circuit’s recent decision in In re Cellect confirmed that, when considering whether a reference patent invalidates for obviousness-type double patenting (ODP) a patent having a term...more

McDonnell Boehnen Hulbert & Berghoff LLP

Overcoming the Consequences of In re Cellect

In view of the unprecedented uncertainty in patent law generated by counter-doctrinal Supreme Court decisions over the past decade or so and a cowed Federal Circuit relegated to complaining that their hands are tied on most...more

Robins Kaplan LLP

In re Sugammadex Bridion® (Sugammadex Sodium)

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Case Name: In re Sugammadex, No. 20-CV-2576 (CCC/LDW), 2023 WL 3966146 (D.N.J. June 13, 2023) (Cecchi, J.) Drug Product and Patent(s)-in-Suit: Bridion® (sugammadex sodium); U.S. Patent No. RE44,733 (“the ’733 patent”)....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

Cozen O'Connor

OTDP After PTA: What You Need to Know

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The Federal Circuit just rendered a decision In re Cellect, LLC, Case Nos. 2022-1293; -1294; -1295; -1296 (Fed. Cir. Aug. 28, 2023), which raises potential validity issues where multiple patents by the same Applicant have...more

MoFo Life Sciences

Patent Term Adjustment Takes A Hit In Cellect Decision

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Recently, the Federal Circuit addressed a significant issue of first impression with respect to obviousness-type double patenting (ODP), holding that ODP applies to patent claims that claim priority to the same application...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

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