Due to COVID-19, the USPTO recently announced that it is possible to request a suspension of the requirement to file a certified copy of a foreign priority application by the time the issue fee is paid, if the foreign priority application is not available via a multilateral priority document exchange program.

Here’s What You Need To Know:

In a recent case, Horizon Pharma, Inc. v. Dr. Reddy’s Laboratories Inc., the Federal Circuit reviewed the claim construction de novo, and agreed with the District Court holding of indefiniteness.

The USPTO is ending the unpopular “First Action Interview Pilot Program” effective January 15, 2021.

According to the program, an applicant could have requested an interview before receiving a first office action on the merits. The examiner would have performed a search and would have provided the applicant with a short communication including potential rejections. 

In a recent decision of the Federal Circuit (Biogen MA Inc. v. EMD Serono, Inc.) claims reciting methods using a recombinant polypeptide were held to be anticipated by prior art methods using a “native” version of the same polypeptide. 

In a recent case, Bio-Rad Laboratories, Inc. v. 10X Genomics Inc., the Federal Circuit affirmed the district court decision that the “tangentiality” exception to prosecution history estoppel can be used to show infringement under the doctrine of equivalents of an amended claim limitation.

The facts of the case are simple.

In the Federal Register Notice published August 3, 2020, the USPTO notified the final rule on fee changes.  This final rule is effective from October 2, 2020, except for the surcharge for non-DOCX filings, which is effective from January 1, 2022.  As detailed in the Table of Patent Fee Adjustments the final rules includes three types of patent fee adjustments:

Pursuant to the CARES Act, and in response to the requests from stakeholders, the United States Patent and Trademark Office (USPTO) is extending the time period for petitioning for certain rights of priority or benefit in a patent application, and waiving the associated petition fee.

In a recent case, Actavis Laboratories v. Nalproprion Pharmaceuticals, the Supreme Court denied certiorari to a case which would have clarified the statute 35 U.S.C. § 112(a) lack of written description.

The case arose from a District Court decision that one claim (claim 11) of U.S. Patent 8,916,195 was not invalid for failure to satisfy the written description requirement.

The USPTO has updated certain patent related timing deadlines under the CARES ACT. 

Click here to read the announcement.

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

Silvia Salvadori, PhD

www.salvadorilaw.com

silvia@salvadorilaw.com