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Contrary to the name, a “final” Office Action is not the end of the road for patent prosecution. Several options are available to applicants after receiving a final Office Action, including USPTO initiatives designed to expedite patent prosecution. Importantly, actions taken for any of the options listed below must be within the six-month statutory period… Read more »
In light of the decision by the Federal Circuit in Amgen v. Sanofi,1 the USPTO issued a two-page Memorandum2 to the Patent Examining Corps “to clarify the applicability of USPTO guidance regarding the written description requirement of 35 U.S.C. §112(a)” as it applies to antibodies. The Memorandum refers to the decision in Amgen, in which “[t]he Federal Circuit… Read more »
Several products approved for marketing as drugs in the US are administered using a device (a drug-device combination product). Companies that own such products often file at least one U.S. patent to protect the device. In addition to obtaining patent protection for the device, a company may also wish to list the device patent in… Read more »
The Texas Supreme Court ruled in In re Andrew Silver1 that client-patent agent communications are protected by attorney-client privilege, stating that patent agents fall within the definition of “lawyer” according to Texas law because patent agents are authorized to practice law before the USPTO. The case involved a patent purchase dispute between Andrew Silver, an inventor, and… Read more »
On January 18, 2018, the European Patent Office (EPO) revoked European Patent No. 2,771,468 (“the ‘468 patent”),1 one of the original CRISPR patents. The ‘468 patent was ultimately revoked by the European Patent Office because the Broad Institute could not establish a right of priority to their earliest U.S. Applications.2 CRISPR (Clustered Regularly Interspaced Short Palindromic… Read more »
A recent decision from the Federal Circuit, though nonprecedential, may help provide some boundaries to the scope of analogous art in the context of an obviousness rejection. In Smith & Nephew Inc., v. Hologic, Inc.,1 the Federal Circuit determined that a prior art reference used to establish a prima facie case of obviousness by the USPTO Examiner, did not… Read more »
In Honeywell v. Mexichem, the Federal Circuit found that the PTAB committed legal error during an inter partes reexamination by improperly relying on inherency to find obviousness and in its analysis of motivation to combine references.1 The claims of the patent owned by Honeywell are directed to a heat transfer composition that is a mixture of the tetrafluoroproene… Read more »
The USPTO increased fee schedule, which sets or adjusts 202 patent fees for large, small, and micro entities, goes into effect January 16, 2018.1 The final rule was published in the Federal Register on November 14, 2017 and is authorized by Section 10 of the Leahy-Smith America Invents Act (AIA).2 The increased fees are broken down… Read more »
A recently designated precedential decision from the PTAB, McAward,1 and a recent Federal Circuit decision, BASF Corporation,2 highlight the differences in the USPTO’s and the court’s interpretation of the definiteness requirement. In McAward, the PTAB explicitly stated that it rejects the Nautilus standard for determining indefiniteness, and instead applies the Packard approach.3 Nautilus requires that claims be “viewed in light of the specification and prosecution history… Read more »
A recent decision from the Federal Circuit indicates that the order in which a court considers evidence attempting to demonstrate non-obviousness is not important, so long as it is considered. In prosecution, this translates to an increased need for strong declarations when traversing obviousness rejections. In Eli Lilly and Co. v. Perrigo Co., the United States… Read more »
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