Intellectual Property

In a precedential opinion issued on April 11, 2024 in Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals Inc., Nos. 22-2153, 23-1952, the U.S. Court of Appeals for the Federal Circuit affirmed the U.S. District Court for the District of Delaware’s decision holding claims directed to polymorphic form “β” of rifaximin invalid as obvious. 

Filing a continuation application from a parent patent is an implicit admission that obviousness-type double patenting (ODP) applies to the resulting continuation patent.  A Terminal Disclaimer in the continuation patent over the parent patent is thus necessary to avoid the public policy concerns underlying ODP.

Implementers of standard essential patents (SEPs) continue to hold out in patent licensing discussions with SEP owners, including pursuing the cynical strategy of seeking anti-suit injunctions (ASIs). 

The United States Patent and Trademark Office (USPTO) released the web-based Patent Public Search tool ("PPS") in late 2021. This useful tool is comparable to the search tool that the PTO’s own examiner’s use to find prior art. That said, PPS has a real learning curve in developing effective search queries. In this article we offer a starting point in developing search queries that will return relevant results.

Compulsory licensing is a practice that allows a third party to produce or use a patented product or process without the consent of the patent owner.  The practice may be implemented to ensure patent owners are utilizing the technology in which they were granted exclusive rights.

As 2024 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2023. According to many readers, hot IP topics included patent litigation strategies, artificial intelligence (AI), and pharmaceutical-related patent applications.

After four years of litigation, Australian-based CAP-XX, Ltd. finally commenced its patent infringement trial this Monday against Maxwell Technologies, Inc. before Judge Jennifer Hall and a Delaware jury and is set to end on Friday.

Imagine excitedly filing a patent application, waiting years for the case to be examined, and then finding your application rejected on grounds that it is obvious or anticipated by your own previously published work. This is a common situation, but it may be avoided with careful planning.

Understanding the implications of venture capital funding on a company’s size classification is crucial, especially when it jeopardizes its “small entity” status and raises concerns with the United States Patent and Trademark Office. Member Michael D. Van Loy, PhD and Associates Jessica Zhang and Qi Zhang break down these complexities, underscoring the importance of accurately determining entity status to avoid pitfalls such as patent invalidation.

The emergence of artificial intelligence (AI) as a field of technology has correlated with an increase in patent application filings on AI-related inventions over the past two decades. With more filings than ever, businesses and institutions developing AI-based technology are claiming rights over key innovations in this space.

On August 28, 2023, the U.S. Court of Appeals for the Federal Circuit, in In re Cellect, Appeal No. 2022-1293, evaluated for the first time how statutorily authorized patent term adjustments interact with the judge-made doctrine of obviousness-type double patenting.

A “picture” claim refers to a patent claim precisely tailored to track a particular product’s important advantages and features. When drafting a patent application, one should describe various embodiments of the invention and include both picture claims, tailored to those embodiments, and broader claims, to encompass groups of embodiments.

On August 24, 2023, the U.S. Court of Appeals for the Federal Circuit, in Volvo Penta of the Ams. LLC v. Brunswick Corp., Case No. 22-1765, vacated a Final Written Decision of the Patent Trial and Appeal Board (PTAB) holding all claims of U.S. Patent 9,630,692 (the “’962 patent”) unpatentable as obvious.

Patent offices may reject a patent application with claims reciting using a composition to treat a disease, based on the requirement that the claimed treatment is not fully supported by the application.

At its heart, a patent grants the right to stop another person from doing whatever falls within the scope of the patent’s claims. A patent is not a right to practice what is included in the patent, or a government stamp of approval on everything within the scope of its claims.