PharmaPatents Timely Insight on Emerging Legal Developments

Tag Archives: Rule 56

USPTO Adapts To Therasense

Posted by Courtenay Brinckerhoff on Posted in USPTO Proposed Rule Changes

The USPTO announced on July 21, 2011, that it plans to “revise the standard for materiality” for the duty of disclosure in view of the Federal Circuit’s decision in Therasense, Inc. v. Becton, Dickinson & Co. In particular, the USPTO plans to “match” the materiality standard the court announced in the context of its inequitable conduct decision. The USPTO acknowledges that the Supreme Court may take up Therasense for review, but has decided to move forward for the time being. The USPTO will accept written comments on its proposal until September 19, 2011.

Continue reading this entry

Will The Federal Circuit’s Therasense Decision Solve The McKesson Problem?

Posted by Courtenay Brinckerhoff on Posted in Duty of Disclosure; Federal Circuit Decisions; Inequitable Conduct

This week the Federal Circuit heard oral arguments in its en banc rehearing of Therasense, Inc. v. Becton, Dickinson & Co. As reflected in the en banc order, the court took this case en banc in order to reconsider—and hopefully reform—the law of inequitable conduct. The court’s decision could solve the McKesson problem and rein in the threat of inequitable conduct charges that drives practitioners to submit references even when they are not believed to be relevant to patentability. 
 

Continue reading this entry