Tag Archives: Priority Claim

Don't Touch That Priority Claim!

In Natural Alternatives Intl. Inc. v. Iancu, the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) that the patent at issue was not entitled to its earliest claimed priority date because NAI had deleted priority claims in a parent application that broke the priority chain. This decision highlights that a … Continue reading this entry

Federal Circuit Finds Incorporation By Reference Inadequate For Priority Claim

In Droplets, Inc. v. E*Trade Bank, the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) that Droplet’s patent was not entitled to the priority date of a provisional application because of a defect in the priority claim. In so doing, the court held that the statutory requirement for a “specific … Continue reading this entry

PTAB Holds Oral Hearings In Tecfidera Patent IPR and Interference

On November 30, 2016, the USPTO Patent Trial and Appeal Board (PTAB) held oral hearings in two different inter partes proceedings involving the Biogen Tecfidera® patent with the latest expiation date. First, it heard arguments in the Inter Partes Review (IPR) brought by Kyle Bass and the Coalition for Affordable Drugs, and then it heard … Continue reading this entry

Inherent Disclosure Supports Priority Claim

In Yeda Research and Development Co. v. Abbott GmbH and Co., the Federal Circuit invoked the doctrine of inherent disclosure to uphold a priority claim to a German priority application that only partly described the claimed protein. Although the patent owner prevailed in this case, the fact pattern underscores the importance of including a robust disclosure in … Continue reading this entry

CAFC Upholds Same Day Continuation Applications

The Federal Circuit decided not to disturb the “longstanding administrative construction” of 35 USC § 120 that permits the filing of a continuation application on the same day its parent application grants as a patent. The decision came in Immersion Corp. v. HTC Corp., where the district court held that the statute requires a continuation application to … Continue reading this entry

Will the Federal Circuit Invalidate 13,500 Continuation Patents?

The Federal Circuit is set to hear oral arguments in Immersion Corp. v. HTC Corp. on May 6, 2016. According to the amicus brief filed on behalf of the United States, if the court affirms the district court decision “over 13,500” continuation patents could be invalidated. According to the amicus brief filed by the Intellectual Property Owners … Continue reading this entry

PTAB Institutes Kyle Bass IPRs Against Juxtapid Patents

The USPTO Patent Trial and Appeal Board (PTAB) decided to institute inter partes review (IPR) proceedings filed by Kyle Bass against two of the five Juxtapid patents listed in the Orange Book. Two of the cited references may qualify as § 102(b) prior art because the provisional application was found not to support certain aspects of the claims.… Continue reading this entry

Federal Circuit Finds Hole In "This" Priority Claim

In Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., the Federal Circuit affirmed the district court’s finding that the patent at issue was invalid because of a defective priority claim. While practitioners may cringe at the apparent clerical error underlying the decision, the USPTO’s new requirement that priority claims be included in an Application Data Sheet … Continue reading this entry

Federal Circuit Applies "Four Corners" Test For Incorporation By Reference To Support Priority Date

In Hollmer v. Harari, the Federal Circuit clarified the requirements for incorporation by reference of subject matter required to support a priority claim under 35 USC § 120. The decision underscores the care that must be taken in a seemingly clerical matter to preserve substantive patent rights.… Continue reading this entry

Will Any Patent Application Be Better Off Under The America Invents Act?

The changes to 35 USC § 102 embodied in the America Invents Act (AIA) take effect on March 16, 2013, under complicated effective date provisions. The general consensus seems to be that applicants should try to file new applications before the law changes, because (for example) applications filed under the new law will be subject … Continue reading this entry

Written Description: When Too Much Is Not Enough

In Goeddel v. Sugano, the Federal Circuit determined that a priority application that disclosed the gene encoding a full-length “precursor” protein did not constitute constructive reduction to practice of interference counts that focused on the “mature” protein. This decision is an important reminder that a disclosure that might be effective to render a claim obvious … Continue reading this entry

Patent Stakeholders Speak Out On Enhanced Examination Timing Control Initiative

On July 20, 2010, the USPTO hosted a public meeting on the proposed Enhanced Examination Timing Control Initiative, which would offer three tracks for examination while delaying examination of foreign-based applications.  (Other blog articles discuss some drawbacks of this proposal and its particular impact on foreign-based applications.) The program began with opening remarks from Director Kappos, which were followed by brief … Continue reading this entry

Part II: Proposed Examination Options Derail Foreign-Based Applications

The USPTO’s proposed changes to the application queuing system will derail foreign-based applications in order to promote the USPTO’s worksharing goals. While domestic applicants will be able to opt into one of three examination tracks (“prioritized,” “traditional,” and “delayed”) applications that claim priority to a foreign application will have their brakes set until the foreign patent … Continue reading this entry