Federal Circuit Upholds Patent Term Adjustment Deduction For IDS Filed After Restriction Requirement

In Gilead Sciences, Inc. v. Lee, the Federal Circuit upheld the USPTO’s interpretation of the Patent Term Adjustment (PTA) statute as permitting the USPTO to charge “Applicant Delay” when an Information Disclosure Statement (IDS) is filed after a response to a Restriction Requirement has been filed. While I am not surprised by this decision, it seems to rest on assumptions regarding examiner workflow that do not reflect reality. The decision also ignores the fact that Gilead could have submitted the IDS at a later stage of prosecution without risking any deduction under the PTA statute. Continue reading this entry

A Second Look At The Innovation Act Obviousness Type Double Patenting Statute

When the Innovation Act first was introduced, I was skeptical of the proposed obviousness-type double patenting statute. I did not understand why some thought that patents that fall under the First-Inventor-To-File provisions of the American Invents Act would not be subject to the existing judicially-created doctrine of obviousness-type double patenting, and I thought that the proposed statute was both too broad and too narrow if it was intended to codify existing OTDP jurisprudence for First-Inventor-To-File patents. Now that the Innovation Act has been reintroduced, I am taking a second look at the proposed statute, particularly in view of the recent Federal Circuit decisions that expanded (or misapplied) the judicially-created doctrine. Continue reading this entry

Court Cites Objects Of Invention In Claim Construction

Pacing Technologies, LLC v. Garmin International, Inc. is one of those Federal Circuit decisions that may send patent practitioners running to their files to double-check the phrasing used in their patent applications. Not only did the court decide that the preamble of a claim was limiting, it held that a relatively common patent drafting technique effected a clear and unmistakable disclaimer of broader claim scope. Continue reading this entry

USPTO Seeks Input On Patent Quality

As announced in a February 5, 2015 Federal Register Notice, the USPTO is launching an enhanced quality initiative that includes a request for public comment on certain proposals and a two-day “Quality Summit” to be held March 25-26, 2015, at the USPTO’s Alexandria, Virginia campus. The overall goal of the USPTO is “to ensure the issuance of the best quality patents and provide the best customer service possible.” Continue reading this entry

Concerns About The Goodlatte Innovation Act

On February 5, 2015, House Judiciary Committee Chairman Bob Goodlatte (R-Va.) introduced the Innovation Act, which is touted as “address[ing] the ever increasing problem of abusive patent litigation.” The bill was introduced as H.R. 9, and is the same as the bill that passed the House in 2013 as H.R. 3309. As I wrote in this article, while the Goodlatte Innovation Act is focused on patent litigation, it includes significant changes to a variety of substantive provisions of U.S. patent law. With momentum building for patent reform, it is time for stakeholders to pay attention to the aspects of the bill that will impact an applicant’s ability to obtain a patent in the first place.  Continue reading this entry