Federal Circuit to Reconsider In re Cellect Carve Out?
Back in August, the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. That decision distinguished In re Cellect as not generally deciding that a second later expiring patent can always serve as a proper OTDP reference. And more particularly that a
Final Rules Expand Director Review Reach
The USPTO has now issued a final rule package (here) to implement the Director Review process in AIA trial proceedings. The final rules follows the Notice of Proposed Rulemaking (NPRM) of April 16th and responsive public comments.
Based on the comments, the final rule proposal has been
CAFC Distinguishes Cellect Based on First-in-Time Patent Term
Today the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. As expected by many following the case, the Court decided that being “first” matters in double patenting scenarios—at least when the subject and reference patent claim a common priority. (here
FWD Boilerplate Encourages Rework
Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim (IPR/PGR/reexam). Last week the Federal Circuit clarified the scope of
Boardside Chat Thursday July 18th
Tomorrow, Thursday, July 18, from noon to PM (EST), the USPTO will offer another episode of its “Boardside Chat” webinar series. This month, the webinar will focus on motions practice in America Invents Act (AIA) proceedings before the PTAB. The presentation will include a discussion of various motions that are
Final Rule Package Expected in Fall
For those patent professionals living under a rock the past few months, the USPTO issued a notice of proposed rulemaking (NPRM) back in May that seeks to add a new stipulation requirement for terminal disclaimers filed to overcome non-statutory double patenting (here). Under the proposal, to overcome
Litigation/PTAB Update & Look Forward to 2025
For those seeking CLE, or just the latest updates and practice changes, consider joining me and my colleague Libbie DiMarco for the upcoming Mid-Year Litigation & PTAB Review. The webinar will be offered twice on Wednesday, June 26th. First for U.S. attendees (12-1PM EST), and again for
Public Notice & Transparency
Yesterday the PTAB announced an update to its Standard Operating Procedure (SOP 1). The update explains how judges are paneled, recused, and staffed on a given case. This latest revision aligns with recently updated Paneling Guidance, Standard Operating Procedure 4, and Director Review procedures. In other words, this SOP is just
Rule Package Discussion
This Thursday May 16th, from noon to 1 p.m. ET, the USPTO will conduct its latest “Boardside Chat.” This week’s program will provide an overview of two recently published notices of proposed rulemaking impacting the the PTAB.
Proposal to Thwart Rerun Patent Assertions
An inventor may obtain claims in a second U.S. patent that vary in only minor (patentably indistinct) ways from claims the same inventor obtained in a first patent. But the USPTO will typically reject the claims in the second application under the doctrine of “obviousness-type double patenting.” Inventors can
