On January 6, 2022, the United States Patent and Trademark Office (USPTO) announced a new pilot program: The Deferred Subject Matter Eligibility Response (DSMER). This pilot program is designed to evaluate how deferred applicant responses to subject matter eligibility (SME) rejections affect examination efficiency and patent quality as compared to traditional compact prosecution practice.
In a recent case, the Federal Circuit reversed the USPTO Patent Trial and Appeal Board (PTAB) decision finding certain method claims obvious, because the evidence did not support the PTAB’s finding that a person of ordinary skill in the art would have had a reasonable expectation of success. Notably, the court instead found the prior […]
In a recent case, Eli Lilly and Co. v. Teva Pharmaceuticals International GmbH, the Federal Circuit upheld the validity of Teva’s patents directed to specific methods of treatment using an “effective amount” of certain antibodies. The court agreed with the Patent Trial and Appeal Board (PTAB) that the claim preambles were limiting, and that obviousness […]
In a recent case, Omni MedSci, Inc. v. Apple Inc., the Federal Circuit held that the language the inventor agreed to via his employment agreement “did not effectuate a present automatic assignment of [his] patent rights.” The following are the facts of this case.
In a recent case, Minerva Surgical, Inc. V. Hologic, Inc., the Supreme Court limited the doctrine that prevents an assignor from subsequently challenging the validity of the patent that he or she assigned.
The rules for the Patent Term Adjustment (PTA) provide for a term deduction for “applicant delay” before the examination commences — if the application is not “ready for examination” within eight months of its filing date (or national stage commencement date). It is very important to be aware of this rule.
In a recent case, Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc., the Federal Circuit expanded the meaning of the enablement requirement under 35 U.S.C. § 112(a). Let’s take a look at how the court arrived at this decision. The claims at issue were directed to methods for sequencing nucleic acid (DNA) using […]
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 […]
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.