February 18, 2020ArticleOblon Featured in Attorney at Law - February 2020Oblon has been featured in Attorney at Law on February 14, 2020 – "Oblon Secures No. 1 Ranking for Most Utility Patents in 2019." This post highlights our ranking for securing the most utility patents in 2019 and our recent promoted partners Yuki Onoe and Daniel Pereira, as co-heads of the Chemical Patent Prosecution Group.Attorney at Law More
September 19, 2019ArticlePrior Art Introduced During Prosecution Has Important Implications for 101 ChallengesFive years after Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208 (2014) and the institution of the Alice test, district courts are still wading through precedent set by the Federal Circuit while it attempts to apply the test. Recently, one New Mexico District Court turned to prior art introduced during the prosecution process that was aimed at the questions of novelty and non-obviousness to determine whether there was an "inventive concept" for the Alice/Mayo test. More
August 30, 2019ArticleThinking Outside the (Utility Patent) Box - Don't Overlook Design Patent Protection in the Life SciencesDesign patents are very different from utility patents in that design patents only protect the ornamental features of an invention. In contrast to utility patents, the design is defined in scope by the content of the drawings rather than the words of a set of claims. Further, design patents have a 15 year term, as opposed to 20 years from filing for utility patents. More
August 16, 2019ArticleNon-Limiting Clauses and Written Description Based on Substantially Equivalent DisclosureNalpropion Pharmaceuticals, Inc. v Actavis Laboratories FL, Inc (Fed. Cir. Aug. 15, 2019) is a precedential opinion written by Judge Lourie with Judge Wallach and a dissent from Judge Prost in a case centered on an ANDA litigation in which Actavis sought approval for their generic version to Nalpropion's patents for the Contrave® product. Footnote 1 in the opinion outlines the rather complex history of the ownership/license interests as they changed over time. More
July 5, 2019ArticleUpdate & Reminder: Patent Term Adjustment Related to IDS Safe HarborOn November 9, 2018, I wrote about the USPTO's release of interim procedures for patentees to request recalculation of the patent term adjustment with respect to information disclosure statements accompanied by a proper safe harbor statement under 37 CFR. 1.704(d) ( More
May 21, 2019ArticleWhat You Say Can Hurt YouOften in writing applications there is a tendency to denigrate prior art techniques. This is not risk free as the patentee in Nuvo Pharmaceuticals (Ireland) v. Dr. Reddy's Laboratories, Inc. (Fed. Cir. May 15, 2019) discovered. More
May 7, 2019ArticleAI: IP Policy ConsiderationOn January 31, 2019, the U.S. Patent and Trademark Office (US PTO) organized a full-day event titled "Artificial Intelligence: Intellectual Property Policy Considerations" which included numerous speakers such as government administrators, academics, industry leaders, and practitioners. One of the many topics discussed the challenges of patenting AI, implications of advancing AI technology on IP laws such as copyright and trademarks, and perspectives on AI policies around the world. In the following slides, some of the topics are summarized with highlights and comments: (i) focus areas of the current administration for promoting AI R&D in US, (ii) key aspects of AI and strategies for preparing AI related patent applications, and (iii) perspectives on AI policies in EU, China, Singapore, and Japan.USPTO Event - More
March 12, 2019ArticleBiologic Patent Transparency Act - New Bill Aimed at BiologicsA bipartisan group of senators sponsored a bill this week—the Biologic Patent Transparency Act, S. 659—aimed at making patent information associated with biologics easier to identify and easing the approval process for biosimilar manufacturers encountering patent roadblocks. More
February 27, 2019ArticleThe Federal Circuit Stays the Course in Patent Ineligibility for an Abstract IdeaIn a precedential opinion issued on February 26, 2019, the Federal Circuit affirmed the District Court's finding of patent ineligibility for a claim "directed to the abstract idea of "collecting, analyzing, manipulating, and displaying data."" University of Florida Research Foundation Inc. v General Electric Company et al (Fed. Cir. 2019). More
January 28, 2019ArticleUSPTO's Patent Term Adjustment Policies Reigned in Yet AgainSince the Federal Circuit's decision in Wyeth v. Kappos, 591 F.3d 1364, 93 U.S.P.Q. 2d 1257 (Fed. Cir. 2010), aff'g, Wyeth v. Dudas, 580 F. Supp. 2d 138, 88 U.S.P.Q.2d 1538 (D.D.C. 2008), which held that the USPTO was improperly reducing patent term adjustment (PTA) by improperly calculating "overlapping" days of agency delay under 35 U.S.C. §154, the courts have been asked on numerous occasions to look at how the USPTO is calculating PTA. More
February 12, 2018ArticleFacts Matter for Patent Eligibility AnalysisFacts no longer matter in American politics, but they still do in patent law. And that is good news for patent owners and applicants facing §101 challenges under the infamous Alice decision. More