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
On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking that, if enacted, would tie the enforceability of every claim of a patent subject to a terminal disclaimer to the...more
A recent case in the Western District of Oklahoma shines a spotlight on the patent danger posed by errors in a terminal disclaimer. In this case, a typographical error in the filed terminal disclaimer rendered an ensuing...more
On May 10, 2024, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking (Notice) concerning major changes to the terminal disclaimer (TD) practice, which may lead to a sea change in patent prosecution...more
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
On May 10, 2024, the United States Patent and Trademark Office (“USPTO”) published a notice of proposed rulemaking in the Federal Register that could dramatically impact prosecution practices, especially for those...more
On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking to add a new requirement for terminal disclaimers filed to obviate nonstatutory double patenting rejections to the...more
On May 10, 2024, the USPTO posted a notice of proposed rulemaking (NPRM) soliciting comments regarding a proposed change concerning terminal disclaimers used to overcome non-statutory double patenting. The proposed change...more
On May 10, 2024, the United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking (NPRM) that proposes a rule regarding new requirements for terminal disclaimers filed to obviate nonstatutory...more
On May 10, 2024, the USPTO issued a Notice of Proposed Rulemaking that proposes major changes to terminal disclaimer practice that could greatly affect both patent prosecution and patent litigation strategies. Specifically,...more
IN RE CELLECT, LLC - Before Lourie, Dyk, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Obviousness-type double patenting analyses for patents with Patent Term Adjustments are based on the...more
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
Can lack of co-ownership for a terminally disclaimed patent render your otherwise well-founded infringement lawsuit baseless, requiring you to pay your adversary’s attorneys’ fees? At present, the answer may depend on the...more
PATENT CASE OF THE WEEK - SimpleAir, Inc. v. Google LLC, Appeal No. 2016-2738 (Fed. Cir. 2018) - In SimpleAir, Inc. v Google LLC, the Federal Circuit vacated a district court’s motion to dismiss pursuant to Rule...more
The Federal Circuit’s decision in Gilead Sciences, Inc. v. Natco Pharma Ltd. introduced even more confusion in an already confusing area of the law – namely obviousness-type double patenting. Obviousness-type double patenting...more
RAND Commitment Relevant to Damages - In ERICSSON, INC. v. D-LINK SYSTEMS, INC., Appeal Nos. 2013-1625, -1631, -1632, and -1633, the Federal Circuit affirmed-in-part and reversed-in-part the district court’s judgment...more
Although the Federal Circuit recently affirmed a district court’s decision on patent invalidity based on obviousness-type double patenting, the case provides an impetus to review terminal disclaimer practice within a patent...more
In In re Dinsmore, the Federal Circuit held that the reissue process could not be used to correct an alleged defect in a terminal disclaimer between patents that were not commonly owned, because there had been no “mistaken...more