New Year's Resolutions For The U.S. Patent System

It’s that time of year when we make resolutions to improve our health, our relationships, our careers, or other areas of our lives. I’m not starting a new diet today (although if I were, the invention described in this patent application could be helpful), but I have been thinking about New Year’s resolutions for the U.S. patent system.

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Federal Circuit Finds Preemption Of State Law Penalty For Sitting Out Biosimilar Patent Dance

The Federal Circuit has issued its final decision in the biosimilar patent litigation between Amgen and Sandoz over the first product to be approved under the Biologics Price Competition and Innovation Act (BPCIA). Not surprisingly, the court determined that Amgen’s state law unfair competition claims were preempted by the “complex statutory scheme” of the BPCIA. Amgen’s claims were based on Sandoz’s failure to share its biosimilar application and participate in the patent dispute resolution procedures, but the court found that the federal statute did not leave room for any state law remedies.

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Canada Provides More Guidance On Patent Eligibility Of Diagnostic Method Claims

While the patent eligibility of diagnostic method claims remains questionable in the United States, the Canadian Intellectual Property Office has issued updated guidance on the types of diagnostic method claims that can–and cannot–be patented in Canada. Since most stakeholders in this field pursue patent protection internationally, it can be important to know the standards that will be applied in different jurisdictions.  Continue reading this entry

USPTO Patent Fees To Go Up January 2018

While Congress is trying to pass a tax reform bill that would cut corporate taxes, USPTO patent fees will increase effective January 16, 2018. The 72% jump in the Inter Partes Review request fee has gotten the most attention, but a number of prosecution fee increases are notable. As stakeholders consider the impact these higher USPTO fees will have on their intellectual property budgets, they can try to be thankful that the fees did not take effect with the new fiscal year on October 1, 2017.

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USPTO Expands Collaborative Search Pilot Program

As announced in this October 30, 2017 Federal Register notice, the USPTO is expanding the Collaborative Search Pilot Program under which applicants can request that multiple intellectual property offices exchange search results prior to issuing a first office action. As explained in the notice, the CSP is designed to provide examiners with a “more comprehensive set of prior art references to consider when making initial patentability determinations.” The Expanded CSP drops the requirement to participate in the First Action Interview Pilot Program and may be opened up to additional intellectual property offices.

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