Federal Circuit Upholds USPTO Post-Wyeth Patent Term Adjustment Procedures

In Daiichi Sankyo Co. v. Lee, the Federal Circuit upheld the USPTO’s post-Wyeth Patent Term Adjustment (PTA) procedures, and found that the USPTO did not abuse its discretion when it limited the Interim Procedures to petitions filed within 180 days of the patent’s grant date. This decision highlights the deferential standard of review applied to USPTO procedures implemented under its rule-making authority. Continue reading this entry

Examination Delay Earns Patent Term Adjustment Only In One Application

In Mohsenzadeh v. Lee, the Federal Circuit affirmed the district court’s decision that the USPTO’s delay in issuing a Restriction Requirement in a parent application does not earn Patent Term Adjustment (PTA) for the ensuing divisional applications. Thus, while Mr. Mohsenzadeh’s parent application earned 1,476 days of “A Delay” for a late Restriction Requirement, his divisional applications did not. Continue reading this entry

Federal Circuit Strikes Final Blow To Celebrex Patent

In 2008, the Federal Circuit determined that claims 1-4 and 11-17 of U.S. Patent No. 5,760,068 were invalid for obviousness-type double patenting (OTDP) over a related parent patent, in part because the ‘068 patent was filed as a continuation-in-part (CIP) application, not a divisional application. Now, in G.D. Searle LLC v. Lupin Pharmaceuticals Inc., the Federal Circuit has held that RE44,048, which was a reissue of the ‘068 patent, also is invalid for OTDP. Since the patent expired June 2, 2015, that likely is the final blow to a patent that was listed in the Orange Book for Celebrex. Continue reading this entry

Federal Circuit Reverses Unreasonable PTAB Claim Construction, Upholds Idle Free Standard For Motions To Amend

The Federal Circuit decision in Microsoft Corp. v. Proxyconn, Inc., addressed several important issues relating to post-grant patent trials conducted by the USPTO Patent Trial and Appeal Board (PTAB), including the PTAB’s claim construction standard and the requirements for motions to amend the claims. The net result of the decision was to affirm-in-part, reverse-in-part, vacate-in-part and remand–which itself raises new questions. Continue reading this entry

USPTO Pilots Expedited Patent Appeal Program But At What Price?

In a June 15, 2015 Federal Register Notice, the USPTO announced the Expedited Patent Appeal Pilot program, which will run until 2,000 ex parte patent appeals are expedited under the program, or until June 20, 2016, whichever occurs first. This program is more like the old “Dump One, Bump One” program that permitted an applicant to obtain expedited examination of one application by abandoning another than the fee-based Track I prioritized examination program, although an appellant can file an RCE in the “dumped” appeal instead of completely abandoning the application. Other “costs” of the program are outlined below.  Continue reading this entry