News & Analysis as of

United States Patent and Trademark Office Patent Term Adjustment Patent Applications

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Foley Hoag LLP

Patent Term Adjustment and ODP: USPTO Defends Federal Circuit's Cellect Decision

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In December 2021, patent practice was upended by four related United States Patent and Trademark Office (USPTO) Patent Trial & Appeal Board (PTAB) decisions holding that patents subject to statutory Patent Term Adjustment...more

Troutman Pepper

EDVA Upholds USPTO’s Calculation of Patent Term Adjustment

Troutman Pepper on

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

Sunstein LLP

The USPTO Giveth and Taketh Away

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According to statute, if prosecution of a patent application is delayed due to the fault of the United States Patent and Trademark Office (“USPTO”), additional term is added to the life of the patent when it issues. This is...more

Mintz - Intellectual Property Viewpoints

Practical Guidelines for Avoiding Patent Term Adjustment Penalty

The duty to disclose required by 37 CFR § 1.56 is a constant weight on patent practitioners and applicants to cite references via an Information Disclosure Statement (IDS). The indiscriminate or reflexive filing of an IDS...more

Foley & Lardner LLP

Which Significant USPTO Fee Increases Might We See in 2025?

Foley & Lardner LLP on

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

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

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

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

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

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

Proskauer - Life Sciences

Is an Appeal Time Well-Spent? For Patents, That Depends . . .

In Sawstop Holding LLC v. Vidal the Federal Circuit confirmed what many practitioners suspected— the Patent and Trademark Office will only award a patent term adjustment to offset a delay caused by appellate review of a...more

McDonnell Boehnen Hulbert & Berghoff LLP

SawStop Holding LLC v. Vidal (Fed. Cir. 2022)

Earlier this month, the Federal Circuit affirmed the grant of summary judgment in favor of the U.S. Patent and Trademark Office by the U.S. District Court for the Eastern District of Virginia, finding that the USPTO did not...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

Troutman Pepper

The USPTO May Be Miscalculating Patent Term Adjustments

Troutman Pepper on

The U.S. Patent and Trademark Office released a final rule on June 16, 2020, to revise how it calculates patent term adjustment. But the USPTO’s PTA algorithm does not yet fully account for its final rule. Originally...more

Troutman Pepper

Patent Term Adjustment PTO Calculation Does Not Fully Reflect 2020 Rule Change

Troutman Pepper on

The U.S. Patent and Trademark Office (USPTO) released a final rule on June 16, 2020, revising how it will calculate Patent Term Adjustment (PTA). However, the USPTO's PTA algorithm does not yet (as of March 2022) fully...more

Fitch, Even, Tabin & Flannery LLP

Too Much Delay Causes Loss of Patent Rights – Redux

On August 5, in Personalized Media Communications v. Apple, the U.S. District Court for the Eastern District of Texas invalidated patents asserted by Personalized Media Communications (“PMC”) for reasons that resonate...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2021 #2

Gilbert P. Hyatt v. Andrew Hirshfeld, Appeal Nos. 2018-2390, -2391, -2392, 2019-1038, -1039, -1049, -1070 (Fed. Cir. June 1, 2021) - This week’s Case of the Week explores a long-running dispute between controversial...more

Troutman Pepper

ODP Should Not Nullify PTA

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The long and arduous path of prosecution begins with the filing of a parent patent application. Several years later, the applicant files a first continuation application. A few more years pass after which the applicant files...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

Mintz - Intellectual Property Viewpoints

USPTO Releases Final Rules on PTA Calculations in view of Supernus

On June 16, 2020, the U.S. Patent and Trademark Office (USPTO) released final rules (the “Rules”) implementing changes to how Patent Term Adjustment (PTA) is calculated in certain circumstances in view of Supernus Pharms.,...more

McDermott Will & Emery

Federal Circuit Sides with PTO on Applicant Delay in Patent Term Adjustment

McDermott Will & Emery on

In a case explaining what comprises an “applicant delay” in the context of a patent term adjustment (PTA), the US Court of Appeals for the Federal Circuit sided with the US Patent and Trademark Office (PTO) ruling that the...more

McDermott Will & Emery

Patent Term Adjustment Denied for Interference-Related Delays

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed the US Patent and Trademark Office’s (PTO’s) calculation of patent term adjustment (PTA), finding that for purposes of PTA, time spent on a requested continued...more

Foley & Lardner LLP

USPTO to Tweak PTA Rules in View of Supernus

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In Supernus Pharmaceuticals, Inc. v. Iancu, the Federal Circuit held that the USPTO cannot charge a Patent Term Adjustment (PTA) deduction for “applicant delay” during a period when the applicant “could have done nothing to...more

McDonnell Boehnen Hulbert & Berghoff LLP

Intra-Cellular Therapies, Inc. v. Iancu (Fed. Cir. 2019)

Last week, in Intra-Cellular Therapies, Inc. v. Iancu, the Federal Circuit affirmed a decision by the U.S. District Court for the Eastern District of Virginia affirming a determination by the U.S. Patent and Trademark Office...more

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