General

06Feb 2020

Recently, the Supreme Court once again refused to take up cases involved in the 101 statute (patentable subject matter). 

Many briefs were filed by the industry, academics, and the government to urge the Supreme Court to update and clarify what is patentable and what is not patentable. The refusal to intervene may be a signal to Congress that it should be up to them to decide on the matter. 

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24Jan 2020

The Safe Harbor Provision of 35 U.S.C. § 271(e)(1) states that:

“It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention (other than a new animal drug or veterinary biological product which is primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site-specific genetic manipulation techniques) solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.”

In a recent infringement case, Amgen v. Hospira, the allegedly infringed patents related to cells that stimulate the creation of red blood cells in anemia patients and a method of preparing erythropoietin (EPO). 

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30Oct 2019

A few weeks ago (mid-October 2019), the USPTO released an updated (view here) patent subject matter eligibility guidance (PEG) along with new examples related to personalized medicine, therapeutic methods, and pharmaceutical products.  

The October update is essentially a clarification of the January 2019 guidance.

This update analyzes five areas of the 35 U.S.C. §101 analysis and procedure in detail, and is accompanied by four new hypothetical § 101 examples, an index of all such examples published since early 2015, and an updated spreadsheet of § 101 court cases.  

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30Sep 2019
Silvia Salvadori Blog Article

Recently, in Mayo Foundation for Medical Education and Research v. Iancu, the Federal Circuit agreed with the U.S. Patent and Trademark Office (USPTO) with regard to the Patent Term Adjustment (PTA) for U.S. Patent No. 8,981,063. The issue was whether the interpretation of “any time consumed by continued examination of the application requested by the applicant” was correct.

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13Sep 2019
Blog article by Silvia Salvadori - Infringement Under the Doctrine of Equivalents: 2 Cases Examined

In two recent cases, the Federal Circuits held that claim amendments at issue were “tangential” to the “equivalent” at issue, and upheld findings of infringement.

The case details are below: 

Case #1: Ajinomoto Co. v. ITC 

The claim amendment at issue related to an encoding nucleotide sequence. The original claim language recited “a protein which comprises an amino acid sequence including deletion, substitution, insertion or addition of one or several amino acids in the amino acid sequence shown in SEQ ID NO:2,” and was replaced with “a protein which comprises an amino acid sequence that is encoded by a nucleotide sequence that hybridizes with the nucleotide sequence of SEQ ID NO:1 under stringent conditions.”

The Federal Circuit agreed with ITC’s determination that the amendment was “tangential” to the equivalent at issue based on the following:

  • The rationale for the amendment was to limit the set of proteins claimed so that it no longer included a protein found in the prior art and was not related with choosing among several DNA sequences in the redundant genetic code that correspond to the same protein.

Thus, according to the Federal Circuit, prosecution history estoppel did not bar application of the doctrine of equivalents.

Case #2: Eli Lilly and Co. v. Hospira, Inc.

During prosecution, the language of administering “pemetrexed sodium” was amended to administering “an antifolate” to distinguish the claims from a prior art reference.

The accused products contained pemetrexed ditremethamine, not pemetrexed sodium, but the Federal Circuit found that the amendment was “tangential” to the equivalent, and thus prosecution history estoppel did not apply.  

The amendment was not related to the type of salt, thus, the applicant did not surrender other pemetrexed salts.

Final Thoughts

Even if within these cases it was possible to find infringement under the doctrine of equivalents, it should be kept in mind that where the reason for the amendment and the equivalent in question both relate to the same claim element, the tangential exception does not apply.

Please contact me at silvia@salvadorilaw.com with questions or comments.

Silvia Salvadori, PhD

Silvia Salvadori, PhD

www.salvadorilaw.com

silvia@salvadorilaw.com

26Aug 2019
Silvia Salvadori - USPTO Proposes Numerous Fee Increases Across the Board

The United States Patent and Trademark Office (USPTO) has proposed to modify the fees associated with all aspects of patent filing and maintenance. The proposal includes an increase — by about 25% — of the petition fees and institution fees for all post-grant proceedings. 

Post-Grant Proceeding Fee Increases

The total fees due will bring the total costs to:

  • $40,000+ for an Inter Partes Review (IPR); and
  • $50,000+ for Post Grant Review (PGR) or Covered Business Method (CBM).
  • A petition challenging more than 20 claims will increase by approximately 25%
  • Non-registered patent attorney admitted to practice before the PTAB will have to pay a new $250 “pro hac vice” fee.  

Issue Fee Increases 

  • Issue fees will increase to $1,200; 
  • the 3.5 year maintenance fees will increase to $2,000;
  • the surcharge will increase to $500.

These are the applicable large entity fees.  Small entity fees will be 50% of the above.

Other Fee Increases

  • The fee for requesting  expedited examination of a design application will increase to $2,000 for a large entity. 
  • If a utility application is not filed in DOCX format, the USPTO will issue a new charge of $400.

This slide deck (USPTO.gov) explains the proposal in further detail. Please note that written comments regarding these fee increases are due to the USPTO by September 30, 2019.

These increases have been justified to enhance the quality and timeliness of patent prosecution.  Another reason why the USPTO proposed these fee increases is to replenish the USPTO coffers, since patent application filings had decreased, perhaps due to the difficulties generated by the recent U.S. Supreme Court on subject matter eligibility?

Silvia Salvadori, PhD

Silvia Salvadori, PhD

www.salvadorilaw.com

silvia@salvadorilaw.com

26Jul 2019

Silvia Salvadori - “Ipsis verbis” Claim Language: Not Enough to Support a Sufficient Written Description Nuvo Pharmaceuticals, Inc. v. Dr. Reddy’s Laboratories, Inc. is an interesting case, recently decided by the Federal Circuit. The claims at issue were directed to a pharmaceutical composition of a non-steroidal anti-inflammatory drug (NSAID) coated with a proton pump inhibitor (PPI). The aim of the invention was to provide a formulation of a NSAID which did not provoke bleeding in the stomach.

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