Publications

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).

Four Decisions Designated Informative on 101: Positive Trend for Life Sciences?

In January, 2019, the USPTO issued new guidance about what constitutes an abstract idea that is ineligible for protection under Section 101.

The U.S. Supreme Court is Not Above Delivering a Good Pun

A good pun is always welcome when reading a legal opinion. Recently, in Return Mail v. U.S. Postal Service, neither snow nor rain nor heat nor gloom of night stopped U.S. Supreme Court Justice Sotomayor from dropping a well-placed pun in her majority opinion. Deep in the opinion at Section II(B), Sotomayor outlined the U.S. Postal Service's three arguments in three sentences. Of these arguments, her pithy conclusion is that "None delivers." Brilliant.

"Statutory" Obviousness-Type Double Patenting for Pharma Patents?

As all patent practitioners know, obviousness-type double patenting is a judicially created doctrine to prevent the unjust extension of patent term of follow on patents that are simply obvious variants of earlier patents.

Commercial Success of Claimed Product over Non-Infringing Competitive Products as Evidence of Non-Obviousness

During litigation or contested proceeding the patentee can point to commercial success of a product as evidence of non-obviousness of the claimed product. Although some work is necessary to show the nexus between the success in the market and the claimed invention, the evidence showing, for example, the product taking sales from competitive products could help the patentee's case.

SOVEREIGN IMMUNITY AND IPR'S: AND NOW, THE REST OF THE STORY

Radio great Paul Harvey would always leave listeners hanging during his broadcast, then return from a commercial with "the rest of the story". Previously, I wrote on the Federal Circuit ruling with respect to Tribal Immunity (https://www.oblon.com/publications/tribal-immunity-in-ipr-is-dealt-a-death-blow-by-the-federal-circuit). At the end of that article I stated: "I note, however, that in the final sentence of their analysis, the Federal Circuit explicitly stated that this decision did NOT address whether there is any reason to treat state sovereign immunity differently with respect to IPR proceedings. That will remain to be seen…"

Oracle v. Google

Brain Darville wrote an article for Intellectual Property magazine's June issue entitled "Oracle v. Google."

Intellectual Property Magazine - June Edition

Written Description In Provisional Application: Perdue Pharma L.P. v. Andrei Iancu.

Amneal Pharmaceuticals, LLC. ("Amneal") filed two petitions for inter partes review of claims 1–13 and 16–19 of U.S. Patent No. 9,034,376 ("the '376 patent") of Purdue Pharma L.P., P.F. Laboratories, Inc. and Purdue Pharmaceuticals L.P. ("Purdue").

What You Say Can Hurt You

Often 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.

PTAB Continues to Expand its Discretion to Deny IPR Review: Do Petitioners Really Have One Year From Service of a Complaint to get Their IPR on File?