USPTO Plans To Hike Patent Fees

The USPTO has published proposed changes to patent fees that it says will “slightly” increase patent prosecution fees–even though several common fees will increase by 10% to 25%. The proposed changes to the Information Disclosure Statement (IDS) fees reflect a planned restructuring of the IDS rules that could benefit applicants, but the other changes seem to simply require applicants to pay higher fees for the promise of enhanced patent examination quality and improved patent examination efficiency. The USPTO hopes to implement the new fees before January 20, 2017, when a new administration will take office.  Continue reading this entry

Wertheim, Dynamic Drinkware And The AIA

In Dynamic Drinkware, LLC v. National Graphics, Inc., the Federal Circuit held that in order for a patent to qualify as prior art as of its provisional application filing date, the provisional application must support the claims of the patent in accordance with 35 USC § 112. That is, a cited patent must be entitled to claim priority to its provisional application before it can qualify as prior art as of the provisional application’s filing date. The discussion of this case on Patent Docs has focused on the court’s interpretation of the pre-AIA version of 35 USC § 102(e). Here, I consider what it may mean for the interpretation of 35 USC § 102(a)(2)/(d) of the AIA.

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Morsa II: Admissions Enable Prior Art

In its 2013 decision in In re Morsa, the Federal Circuit vacated an anticipation rejection where “both the Board and the examiner failed to engage in a proper enablement analysis” to establish the enabling quality of the cited prior art reference. On remand, the USPTO Patent Trial and Appeal Board determined that the reference at issue was enabling, based largely on statements in Morsa’s patent application regarding the state of the art. In it’s recent decision in Morsa II, the Federal Circuit affirmed the rejection, over a vigorous dissent by Judge Newman. Continue reading this entry

No Rehearing Of Biosimilar Patent Dance Decision

The Federal Circuit denied the petitions for rehearing en banc filed in Amgen Inc. v. Sandoz Inc., which was the court’s first decision interpreting the Biologics Price Competition and Innovation Act (BPCIA).  Perhaps the court thought that because both parties sought rehearing they must have gotten it right, but Amgen and Sandoz took issue with different aspects of the panel decision. Continue reading this entry

PTAB Institutes Kyle Bass Lialda Patent IPR

After filing over thirty petitions for Inter Partes Review of Orange Book-listed patents for various drugs, Kyle Bass and his Coalition for Affordable Drugs finally has made it over the first hurdle. The USPTO Patent Trial and Appeal Board (PTAB) decided to institute IPR proceedings against U.S. Patent No. 6,773,720, which is listed in Orange Book for Lialda®. This is bad news for Shire, since this is the only Orange Book-listed patent for Lialda®, and also bad news for pharmaceutical companies who hoped Kyle Bass would get discouraged and stop his campaign again pharmaceutical patents.  Continue reading this entry