A patent must teach one skilled in the relevant art how to make and use the claimed invention, as required by 35 U.S.C. §112(a). The Manual of Patent Examining Procedure (MPEP) 608.01(p) explains that unless an invention is disclosed such that one skilled in the art will be able to practice it without undue experimentation, … Continue Reading
On June 21, 2021, in United States v. Arthrex, the United States Supreme Court ruled that Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”) are unconstitutionally appointed because they effectively wield the power of principal officers while being appointed as inferior officers. 594 U.S. ____ (2021).… Continue Reading
To mitigate potential conflicts of interest and to improve the public’s understanding of the United States Patent and Trademark Office (USPTO) procedures, the agency has recently made various amendments to its rules relating to the conduct of registered patent attorneys and agents. The resulting changes mirror some well-recognized provisions of the American Bar Association’s (ABA) … Continue Reading
In a recent post, we discussed the importance of complying with the US Patent and Trademark Office’s duty of disclosure under Rule 56 of the Rules of Practice. This post focuses on the existence of this duty throughout the entire prosecution of a patent application, in a specialized factual context involving a priority application outside … Continue Reading
A recent order from a patent infringement lawsuit in the Northern District of Illinois serves as a good reminder that factual information about attempts to design around a patent are generally discoverable. This case also distinguishes discoverable factual information from privileged opinion and mental impressions of design-around efforts. In addition, the order suggests “exceptional circumstances” … Continue Reading
One advantage of filing a patent infringement complaint at the U.S. International Trade Commission (“ITC”) instead of in U.S. District Court is that a Complainant does not need to use the Hague Service Convention process or other treaty to serve the complaint on foreign entities. As explained here, recent ITC decisions expand the methods through … Continue Reading
When you apply for a patent in the United States, you have a legal duty to disclose prior art that could be used to reject your application — in essence, information that may be used against you by the examiner of your application. While persons accused of a crime have a right to remain silent, … Continue Reading
Earlier today, the U.S. International Trade Commission (ITC) announced a pilot program that will allow Administrative Law Judges (ALJs) to issue interim Initial Determinations (IDs) on fewer than all issues in Section 337 investigations. The announcement can be found here. The pilot program is part of the ITC’s ongoing efforts to expeditiously resolve Section 337 … Continue Reading
On Tuesday, May 5, 2021, the U.S. Trade Representative Katherine Tai released an unprecedented statement supporting a “Covid-19 TRIPS Waiver.” Specifically, Ambassador Tai stated “[t]he Administration believes strongly in intellectual property protections, but in service of ending this pandemic, supports the waiver of those protections for COVID-19 vaccines. We will actively participate in text-based negotiations … Continue Reading
In patent disputes involving complex technologies, especially when the disputed patent was developed in an early stage of the technical field, research papers and similar publications are oftentimes relied on to make obviousness-based invalidity challenges. It is common for such research papers to include predictions or aspirations with regards to potential future developments in the … Continue Reading
Patent protection in Europe is regulated by a complex system. In addition to the “classic” national patents, there is a transition to a new Unitary Patent system, which has been in planning for almost a decade now and is expected to finally enter into force in Spring 2022. It will consist of the European Unitary … Continue Reading
As a companion to the COVID-19 Prioritized Examination Pilot Program and patent-related relief provided by the 2020 CARES Act, the United States Patent and Trademark Office (“USPTO”) recently announced a similar Fast-Track Appeals Pilot Program for patent applications claiming a process or product requiring FDA approval for COVID–19 use. In general, under 35 U.S.C. § … Continue Reading
Since the mid-2000s, mention Marshall, Tyler, Sherman, Beaumont or Texarkana to an experienced patent litigator and you would get knowing nods about this string of small Texas towns, tips on their favorite BBQ or Tex-Mex restaurants, and war stories about the big patent wars fought there. The Eastern District of Texas, along with the District … Continue Reading
On March 11, 2021, the Federal Circuit issued a precedential decision in In re PTAB of Trustees of the Leland Stanford Junior University affirming a decision by the Patent Trial and Appeal Board (PTAB) to maintain the examiner’s rejection of claims involving analysis of genetic data to determine inheritance. The Federal Circuit found that the … Continue Reading
Although America Invents Act (AIA) patent practice is entering its 8th year, many pre-AIA patent applications remain pending. This requires practitioners to stay attentive as to whether examination is being conducted under pre-AIA practice, and to ensure that the pre-AIA rules are correctly applied. In this regard, to avoid unnecessarily ceding claim scope to disqualified … Continue Reading
A bipartisan group of Senators, including the Chair and ranking minority member of the Subcommittee on Intellectual Property, has proposed legislation that would allow the US Patent & Trademark Office to collect demographic data on patent applicants. The bill, known as the Inventor Diversity for Economic Advancement Act of 2021 or, more simply, the “IDEA … Continue Reading
As is often the case in China, a critical change in the IP system has taken place without the publicity of a new law but with an internal administrative document hidden on a government website. With an administrative Circular issued on January 27, 2021, the China IP office is rewriting the rules that led to … Continue Reading
Monday’s announcement of the institution of a section 337 investigation of Certain Batteries and Products Containing the Same, 337-TA-1244, is notable as the first time in recent memory that a battery company has sued in the US International Trade Commission (ITC) for design patent infringement. Battery patents typically cover new and useful features of a … Continue Reading
In his continued blog series, Dr. Paolo Beconcini examines recent developments in Chinese IP law together with their international causes and consequences. In a first post, he reviews some of the major changes to the Patent Law and assesses their likely impact on foreign businesses in China. In a second post, he reports on the Comprehensive Agreement … Continue Reading
The year 2020 saw increasing acceptance of cannabis in the US, as indicated by legalization in another five states, proposed federal legalization, and the designation of cannabis (where available) as essential during the coronavirus pandemic. The United Nation’s recent reclassification of cannabis signals similar changes on a global scale. As a result of these changes, … Continue Reading
Back in July we wrote about the doctrine of equivalents (DOE) in bio/pharma cases in general, and the on-going saga of DOE in Lilly’s ALIMTA® litigation specifically. Last week, the Federal Circuit penned a new chapter, issuing a non-precedential decision in Eli Lilly and Company v. Apotex, Inc. Didn’t this all end last June? Not … Continue Reading
In 1988, the Danish movie called “Babette’s Feast,” based on a story by Danish novelist Karen Blixen (Isak Dinesen), earned an Oscar for best foreign language film. We remember this much-loved movie about loss, survival and the art of French food. For those of you who are interested in IP and are going to share … Continue Reading
On 18th December 2020, the German Federal Assembly (Bundesrat) approved the law on the Agreement on a Unified Patent Court of 20th June 2013 (UPC-Agreement) with the required two-thirds majority. It was the last puzzle piece for paving the way for a Unitary Patent System in Europe, which is now expected to be operational from … Continue Reading
On December 9, 2020, the US Patent and Trademark Office (Office) published some final rules in the Federal Register. For the most part, these rules codified existing Patent Trial and Appeal Board (PTAB) practice relating to whether and how the PTAB institutes an inter partes review (IPR) or a post-grant review (PGR) proceeding, and to … Continue Reading
