Publications

Section 101 at the Patent Trial and Appeals Board - A Surprising Result?

Oblon Featured in Attorney at Law - February 2020

Oblon 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

Ex Parte Linden Gives a Boost to the Subject Matter Eligibility of AI inventions

USPTO Proposed Revisions to Rules on Patent Term Adjustment

Prior Art Introduced During Prosecution Has Important Implications for 101 Challenges

Five 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.

Specification Must Adequately Disclose the Claimed Invention to Avoid Invalidation for Lack of Written Description

Drs. Stephen Quake and Christina Fan ("Quake") appealed a decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board ("the Board") finding the four claims of Quake's U.S. Patent 8,008,018 and Claim 25 of their U.S. Application No. 12/393,833 unpatentable for lack of written description.

Thinking Outside the (Utility Patent) Box - Don't Overlook Design Patent Protection in the Life Sciences

Design 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.

Non-Limiting Clauses and Written Description Based on Substantially Equivalent Disclosure

Nalpropion 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.

Invalidity of Broad Claims for Lack of Enablement in the Absence of Sufficient Disclosure of the Structure/Function Correlation and Unpredictability in the Art

Enzo Life Sciences, Inc. ("Enzo") appealed the decision of the U.S. District Court for the District of Delaware granting summary judgment against Enzo and holding that the asserted claims were invalid for lack of enablement. The Federal Circuit affirmed.

Update & Reminder: Patent Term Adjustment Related to IDS Safe Harbor

On 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) (http://www.lifesciencesipblog.com/?t=39&format=xml&A=18655&p=15972).