While I stand by my view that the doctrine of obviousness-type double patenting is one of the most complicated aspects of U.S. patent law, regulations governing the ability to claim “Small Entity” status and pay reduced USPTO...more
The doctrine of obviousness-type double patenting is one of the most complicated and most confounding aspects of U.S. patent law. Although a Terminal Disclaimer can overcome most obviousness-type double patenting rejections,...more
In a Director’s Forum blog on the importance of interview practice to the patent examination process, the USPTO announced that the First Action Interview Pilot Program is going to end on January 15, 2021, largely due to...more
The USPTO has published proposed guidelines on the types of courses and activities that will qualify for USPTO CLE credit, which practitioners may voluntarily report in the mandatory biennial registration statements that will...more
In an effort to both promote innovation against COVID-19 and promote dissemination of information about innovation against COVID-19, the USPTO is launching a new “deferred fee” pilot program for certain provisional patent...more
9/18/2020
/ Certifications ,
Coronavirus/COVID-19 ,
Emergency Use Authorization (EUA) ,
Federal Register ,
Food and Drug Administration (FDA) ,
Investigational Device Exemptions ,
Investigational New Drug Application (IND) ,
Patent Applications ,
Patent-Eligible Subject Matter ,
Pilot Programs ,
Premarket Approval Applications ,
USPTO
In a Federal Register Notice dated August 3, 2020, the USPTO published a final rule on fee changes that take effect October 2, 2020. The final rule implements fee changes we first learned about in August of 2018, with some...more
The USPTO has initiated a new pilot program for expediting ex parte appeals from examiner rejections. Under the Fast-Track Appeals Pilot Program, applicants can pay $400 for expedited review in which case the USPTO will...more
The United States Patent and Trademark Office (USPTO) has expanded the type of relief available under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). Now, priority claims can be made in certain...more
The United States Patent and Trademark Office (USPTO) has extended the period for deferring certain deadlines under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) with important modifications. The most...more
In an effort to help independent inventors and small businesses bring “important and possibly life-saving treatments” to market more quickly, the United States Patent and Trademark Office (USPTO) is implementing the COVID-19...more
The United States Patent and Trademark Office (USPTO) has extended the period for deferring certain deadlines under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act). The relief still applies only to those...more
One of the most confusing—and frustrating—aspects of the USPTO’s Patent Term Adjustment (PTA) rules is the mismatch between the PTA rules and the Information Disclosure Statement (IDS) rules. In Gilead Sciences, Inc. v. Lee,...more
The United States Patent and Trademark Office (USPTO) has now announced how it will exercise its authority under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to extend certain statutory deadlines. Unlike...more
Reaction to the novel coronavirus—the SARS-CoV-2 virus—is changing every day as jurisdictions take measures to limit the spread of infection. Foley & Lardner LLP has formed a multi-disciplinary Coronavirus Task Force, which...more
As set forth in this March 2, 2020 Federal Register Notice and effective immediately, the USPTO is going to start inquiring into petitions to revive an abandoned application, accept a delayed maintenance fee payment, or...more
We previously discussed the new personalized medicine example in the USPTO’s October 2019 Patent Eligibility Guidance Update. Here, we look at the new nature-based product example, and consider how it may impact...more
The USPTO has released additional patent eligibility guidance to supplement the guidance released in January. While much of the October 2019 Patent Eligibility Guidance Update relates to claims falling under the “abstract...more
On October 17, 2019, the USPTO issued new patent subject matter eligibility guidance, the first such memo since the January 2019 guidance on 35 U.S.C. §101. The January 2019 memo described a three step, two prong procedure...more
In Supernus Pharmaceuticals, Inc. v. Iancu, the Federal Circuit held that the USPTO cannot charge a Patent Term Adjustment (PTA) deduction for “applicant delay” during a period when the applicant “could have done nothing to...more
On Friday I will be speaking at the AUTM Eastern Regional Meeting, on a panel discussing patent eligibility issues for life sciences inventions. My topic relates to what the USPTO refers to as “nature-based products,” but...more
In Intra-Cellular Therapies, Inc. v. Iancu, the Federal Circuit agreed with the USPTO’s Patent Term Adjustment (PTA) calculation that charged a deduction for “applicant delay” for time after the applicant filed a first...more
In Mayo Foundation for Medical Education and Research v. Iancu, the Federal Circuit agreed with the USPTO’s Patent Term Adjustment (PTA) calculation that excluded prosecution that occurred after an interference was decided...more
The USPTO has taken another major step in the fee-setting process for fee adjustments it expects to implement in January 2021, and published the proposed fees in the Federal Register. The major changes are the same as those...more
Last week Senators Chris Coons (D-Del.) and Tom Cotton (R-Ark.) and Representative Steve Stivers (R-Ohio) and Bill Foster (D-Ill.) reintroduced the STRONGER Patents Act, originally introduced in 2017. While many recently...more
The “Terminating the Extension of Rights Misappropriated (TERM) Act of 2019” would create a presumption that every other patent listed in the Orange Book has been terminally disclaimed over the earliest-expiring Orange...more