USPTO Proposes Several Rule Changes Affecting Institution of Post-Grant Proceedings

Low view of a modern office building standing tallOn Tuesday, May 26, the United States Patent and Trademark Office (“USPTO”) issued a notice of proposed rulemaking outlining changes to the rules of patent practice for inter partes review (“IPR”), post-grant review (“PGR”), and covered business method (“CBM”) proceedings before the Patent Trial and Appeal Board (“PTAB”). Many of the proposals merely conform the rules to current standard practices for institution of proceedings and filing of sur-replies. The most significant amendment would eliminate a presumption in favor of the petitioner that is currently used when deciding whether to institute a proceeding. Three of the key changes are discussed here. Continue Reading

Complying with ASA Rules During a Pandemic

The UK’s Advertising Standards Agency recently provided some useful guidance on compliance with its CAP Code that will assist promoters, influencers, agencies and brands as they continue to navigate the various ASA rules during the COVID-19 crisis.

Dealing with unexpected events whilst running promotions

Section 8 of the CAP Code governs promotions, and includes rules around dealing with the impact of unexpected events. For example, if promoters are no longer able to supply and fulfil demand for a promotional offer due to the coronavirus pandemic, Rule 8.11 requires promoters to ensure timely communication to applicants and consumers and, where there is a detriment to applicants, to offer refunds or substitute products. Continue Reading

Update: Recent International Activity on IP in Response to COVID-19

As previously blogged, even before potential treatments could yield results in trials, relevant stakeholders quickly pushed their respective (and, in most cases, expected) positions relating to the balance between IP rights and access.

Back in April, the World Health Organization announced support for an IP pool proposal relating broadly to COVID-19. Offered by Costa Rica, the proposal would create “a repository of information on diagnostic tests, devices, medication or vaccines, with free access or licensing on reasonable and affordable terms, in all member countries of the Organization.” Continue Reading

Effectively and Efficiently Managing Remote Depositions Requires Careful Thought

Courts are exercising their power under Rule[1] 30(b)(4) to order that depositions be taken remotely and by videoconference during these uncertain times of the coronavirus pandemic. Such orders reflect concerns about the progress of cases, as discussed in our prior blog, and the public health. With remote depositions being essential under current circumstances, attorneys need to learn how to effectively and efficiently manage such depositions. We discuss here four aspects of remote depositions that require special attention, and provide tips to help minimize technical difficulties, ensure confidentiality, and provide the examining attorney with reasonable control over the proceeding, all while following the applicable federal and local rules and court orders. Continue Reading

The Chinese Supreme People’s Court Intervenes on Patent Issues, with Focus on Pharmaceutical Experiments

China FlagIn April 2020, the Supreme Court of the People’s Republic of China published the amended draft Provisions concerning interpretation of certain norms of the patent law and its implementing regulations about the administrative litigation of patent rejections and invalidations.[1] The Provisions offer the Supreme People’s Court the opportunity to address new issues and matters not expressly regulated by the patent law. In this second draft of the provisions, as discussed in more detail below, the Court addresses several matters concerning the administrative litigation of patent re-examination and invalidation claims and proceedings. Once the public, mostly including private in-house practitioners and law firms, has provided comments, the Supreme Court will revise the text and adopt the final and binding version. Continue Reading

Complimentary Webinar – Legal Insights Series – Equitable Attacks on Patents Live On: Learning From Case Studies

Inventors and lawyers — both in-house and firm counsel — involved in the prosecution of patents have a duty of candor to the US Patent Office, and breaching that duty renders patents unenforceable for inequitable conduct. Once common in litigation, allegations of inequitable conduct faced a more stringent review after the Federal Circuit’s decision in Therasense. Despite those heightened standards, recent cases demonstrate that equitable attacks on patents live on, are often successful and commonly scrutinize the actions of in-house counsel. Continue Reading

May Issue of Bio/Pharma Beat Now Available

DNAOur monthly newsletter reports on the patent law developments in biotech, biologics and pharmaceutical cases, legislation and federal agency actions. This month’s issue covers relevant news from April 2020, including:

  • The Federal Circuit potentially extends the potential reach chemical compound structural similarity obviousness law
  • The Federal Circuit holds that a section 156 patent term extension based on FDA approval of an active ingredient “does not encompass a metabolite of the active ingredient”
  • The Federal Circuit issues two decisions on Article III standing in appeals from the PTAB Hoping that you and your loved ones are safe and healthy.

Copyright Authorship: Disputes Persist without Express Repudiation

Almost sixty years after the Everly Brothers recorded Cathy’s Clown, the authorship of the song is being disputed by Brother Don and the heirs of the late Brother Phil. In a recent decision, the Sixth Circuit revived the case. It found that Don’s 2011 copyright termination notice, in which he claimed to be the sole author, did not constitute a “plain and express repudiation” of authorship, and hence did not clearly trigger the statute of limitations barring his suit. A jury will therefore have to “sort it all out.” Please see Corey McGehee’s blog post for details and discussion of this fascinating dispute about the Everly Brothers’ iconic hit single.

LEAP into Practice Before the PTAB

As most attorneys know, effective communication is essential in protecting and advocating for clients, but gaining oral advocacy experience sometimes takes years. For patent attorney and agents, this experience can come before the Patent Trial and Appeal Board (PTAB). In an effort to encourage less senior patent attorneys and agents to gain this valuable experience, the USPTO has begun the Legal Experience and Advancement Program, or “LEAP.” With this program, the USPTO seeks to provide oral advocacy opportunities to junior attorneys and agents who might not otherwise gain such experience, and thereby ensure that all attorneys and agents who practice before the PTAB have the skills necessary to effectively and competently represent their clients. Continue Reading

Coronavirus Disrupts Industry Meetings but Innovation Continues

The last several months have presented new and formidable challenges for virtually every industry in light of COVID-19. Among these challenges are what to do about the various industry meetings and conferences that are used for networking, introducing new ideas, securing supply/distribution contracts, and developing technology standards. These types of events have historically been held in-person, recognizing that there is value to being able to shake a colleague’s hand or to gather with a community of peers. As social distancing and stay-at-home orders have caused us to adjust the way we go about our daily lives, so too have industries had to adjust their vital, in-person, meetings. This blog post will review COVID-19’s impact on various industry meetings and the ways in which industries have committed to continuing to press innovation forward. In addition, we review important considerations in light of disruptions to these industry meetings and the Coronavirus Aid, Relief and Economic Security (CARES) Act with respect to patent filing strategies. Continue Reading