PharmaPatents

Timely Insight on Emerging Legal Developments

Federal Circuit Finds Obviousness-Type Double Patenting Without Common Ownership

Posted by Courtenay Brinckerhoff on Posted in Federal Circuit Decisions; Obviousness Type Double Patenting

Obviousness-type double patenting usually arises between commonly-owned patents or patent applications. While the USPTO has interpreted the judicially-created doctrine as pertaining when there is common or overlapping inventorship, without regard to common ownership, the Federal Circuit had not upheld that interpretation of the doctrine until last week, in In re Hubbell.Continue reading this entry

Does The Experimental Use Exception Survive The AIA?

Posted by Courtenay Brinckerhoff on Posted in Patent Reform; Uncategorized

Now that the March 16, 2013 effective date of the first-to-file provisions of the Leahy-Smith America Invents Act (AIA) is fast-approaching, I have been reviewing the commentary in the USPTO’s February 14, 2013 Federal Register Notices publishing the final First Inventor To File rules and Examination Guidelines. Comment 12 of the Guidelines, which relates to experimental use, caught my attention. Continue reading this entry

USPTO To Waive New Appeal Fee For Appeal Briefs Filed By March 18, 2013

Posted by Courtenay Brinckerhoff on Posted in Patent Office Practice

While most stakeholders are focused on the first-inventor-to-file changes to U.S. patent law that take effect on March 16, 2013, some applicants could realize significant cost savings by taking certain actions by March 18, 2013, to avoid the new USPTO fees that take effect on March 19, 2013. Applicants in the process of preparing Appeal Briefs will be interested to know that the USPTO will waive the new appeal fee if an Appeal Brief and fee are filed before March 19, 2013.

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Supreme Court Holds A Gunn To Exclusive Federal Court Jurisdiction Over Patent Malpractice Claims

Posted by Courtenay Brinckerhoff on Posted in Supreme Court Decisions

In Gunn v. Minton, the Supreme Court held that federal courts do not have exclusive jurisdiction over patent malpractice claims. Under 28 USC § 1338(a), federal courts have exclusive jurisdiction over cases “arising under any Act of Congress relating to patents,” but the Court determined that patent malpractice claims do not arise under the patent laws. Continue reading this entry

Federal Circuit Upholds Fentora Patents, But Affirms Non-Infringement

Posted by Courtenay Brinckerhoff on Posted in Enablement; Federal Circuit Decisions

In Cephalon, Inc. v. Watson Pharmaceuticals, Inc., the Federal Circuit reversed the district court’s finding that two Orange Book-listed patents for Cephalon’s FENTORA® product were invalid, but affirmed the district court’s finding that Watson’s ANDA product would not infringe the patents. The Federal Circuit decision reviews the “undue experimentation” standard for lack of enablement, and underscores the importance of aligning evidence of infringement with the governing claim construction.Continue reading this entry

Maximizing The Effect Of Patent Applications As Prior Art Under The AIA

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

Now that we are less than one month away from implementation of the First-Inventor-To-File provisions of the America Invents Act (AIA), stakeholders are considering whether to file new patent applications now, to secure examination under the current First-To-Invent patent system, or wait until March 16, 2013, so that the applications will be governed by the new U.S. patent laws. While there are a few situations where delaying filing could be advantageous, stakeholders do not need to wait to file their patent applications until March 16, 2013 in order to maximize their prior art effect.Continue reading this entry

A First Look At The Final First Inventor To File Rules

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

The USPTO’s final First Inventor To File rules and Examination Guidelines were published in the February 14, 2013 edition of the Federal Register. While many of the final rules are identical to the proposed rules, there are some important changes to note.Continue reading this entry

USPTO Considers Best Practices To Improve Patent Application Quality

Posted by Courtenay Brinckerhoff on Posted in Patent Office Practice

In a Federal Register Notice published January, 13, 2013, the USPTO asks the public to consider potential best practices aimed at improving patent application quality ”in order to facilitate examination and bring more certainty to the scope of issued patents.” These practices are separate but related to initiatives being pursued via the USPTO’s partnership with the software community to enhance the quality of software-related patents. The USPTO will consider written comments received by March 15, 2013. Continue reading this entry

International Harmonization Of Patent Laws

Posted by Courtenay Brinckerhoff on Posted in International Patent Practice; Patent Office Practice

The USPTO and other patent offices around the world are studying the feasibility of the international harmonization of patent laws. As part of this initiative, the USPTO is soliciting stakeholders views on four key issues: (1) the grace period; (2) eighteen month publication; (3) the treatment of conflicting patent applications; and (4) prior user rights. As set forth in a recent Federal Register Notice, stakeholders can provide their views by answering an on-line questionnaire and by participating in a public hearing that will be held at the USPTO’s Alexandria, Virginia campus on March 21, 2013.

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A Look At The Technical Amendments To The America Invents Act (AIA) Made By HR 6621

Posted by Courtenay Brinckerhoff on Posted in Patent Reform

On January 14, 2013, President Obama signed HR 6621 into law. The title of HR 6621 is “To correct and improve certain provisions of the Leahy-Smith America Invents Act,” but it also makes changes to other provisions of U.S. patent law, including the Patent Term Adjustment (PTA) provisions. This article provides an overview of the substantive changes to the AIA embodied in this law.Continue reading this entry