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

In accordance with the temporary authority provided by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the United States Patent and Trademark Office (USPTO) today further extended the time to file certain patent-related documents and to pay certain required fees.

The USPTO has already extended various deadlines twice, with the latest extension expiring at the end of May, 2020. However, the USPTO recognizes that the COVID-19 pandemic continues to impose various hardships, especially on small businesses and individual inventors. Accordingly, as stakeholders continue to navigate the effects of the pandemic in various ways, and as more and more of them are resuming operations, the USPTO will again extend certain deadlines. 

On April 28, 2020, the U.S. Patent and Trademark Office (USPTO) announced that certain patent-related documents and certain required fees could be submitted at a later time. These additional extensions apply to deadlines that would have been otherwise due between March 27 and May 31, 2020, and which are now considered timely if submitted by June 1, 2020. The USPTO will continue to evaluate and adjust the situation according to the impact of the pandemic on its operations.

The April 28 notice states that “a person who is unable to meet patent-related timing deadlines due to the COVID-19 outbreak may be eligible for a waiver of certain deadlines.” 

The April 28 notice sets forth the deadlines for which relief may be obtained:

Due to the COVID-19 Emergency, the United States Patent and Trademark Office (USPTO) has announced extensions (read more here) to the time allowed to file certain patent- and trademark-related documents, as well as payment of certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27, 2020. Read the press release for more information.

In the Federal Register Notice of March 2, 2020 (linked here), the United States Patent and Trademark Office (USPTO) published a guidance such that, effective immediately, it will be necessary to provide evidence that delays were unintentional for the following petitions:

In a recent case, Samsung Electronics America v. Prisua Engineering Corp., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) cannot invalidate patent claims as indefinite during an Inter Partes Review, making some patents more difficult to challenge.

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. 

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). 

In 2001, the U.S. Patent and Trademark Office (USPTO) issued a written description guideline in which it specified that one of skill in the art would have recognized that the spectrum of antibodies which bind to antigen X were implicitly disclosed as a result of the isolation of antigen X.