Intellectual Property

On March 31 we posted about the Patent Office rolling out a series of rulemakings for improving post-grant proceedings, beginning with a first rule package of “quick fixes” this spring.

Welcome to the blog’s first post in a series about restriction requirements! This series will explore nuances in restriction requirement law and provide strategies for most effectively handling restriction requirements, both before and after they arise during prosecution of a U.S. patent.

Today the Patent Trial and Appeal Board (“Board”) posted on its website Revision 14 of its Standard Operating Procedure 1 (SOP 1). SOP 1 covers the assignment of Administrative Patent Judges to merits panels, interlocutory panels, and expanded panels in appeals, interferences, and AIA Reviews.

The Patent Trial and Appeal Board ("the Board") recently announced the addition of its March 26, 2015 decision in Dell, Inc. et al. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 (“the ‘549 IPR”) to its online list of Representative Orders, Decisions, and Notices.

On May 6, 2015, the U.S. Department of Justice (“DOJ”) and U.S. Federal Trade Commission (“FTC”) submitted public comments to the U.S. Patent and Trademark Office (“PTO”) commending the PTO for its efforts to enhance patent quality and making specific recommendations on how the PTO may improve its processes.

The U.S. Patent and Trademark Office (USPTO) recently launched the Patent Application Alert Service (PAAS), a free electronic tool aimed to keep the public apprised of the publication of patent applications.

Have you seen John Oliver’s piece about abuses in the patent system? If not, take a look here. The ‘Last Week Tonight’ host has quite a bit of fun at the expense of the patent system.

Last Friday the Patent Trial and Appeal Board (PTAB) denied four Sandoz Inc. petitions for instituting inter partes review (IPR) of U.S. 8,455,524 (IPR2015-00005), U.S. 7,612,102 (IPR2015-00006), U.S. 7,659,290 (IPR2015-00007), and U.S. 7,659,291 B2 (IPR2015-00008) (referred to herein as the “EKR Patents”).

U.S. patent applicants often have an interest in expediting the patent examination process. The desire to speed examination can result from issues related to the availability of an inventor, possible infringing activity by a third party, business conditions or the advantageous nature of the technology that require a clear understanding of a stake holders patent rights, or other factors.

U.S. patent applications filed after March 16, 2013, when the “First-Inventor-to-File” portion of the America Invents Act (AIA) took effect, have started to be published.

The most hotly debated issue at this year’s GCR IP & Antitrust Conference, held on April 14 in Washington, DC, was the DOJ’s guidance issued in a February business review letter to the Institute of Electrical and Electronics Engineers (IEEE).

Tuesday, April 14, the House Judiciary Committee convened to discuss H.R. 9, the “Innovation Act,” which was introduced in February 2015 by the Committee’s Chairman, Rep. Bob Goodlatte (R-VA).

In a decision released on March 25, 2015, FDA denied a Citizen’s Petition that would have effectively made the information and patent exchange described in § 262 of the Biologics Price Competition and Innovation Act (“BPCIA”) a precondition for approval.

Under Secretary of Commerce for Intellectual Property and USPTO Director, Michelle Lee, announced on Friday that a series of actual and proposed rulemakings aimed at improving post-grant proceedings before the PTAB will be forthcoming—some effective immediately and others rolling out over the summer and beyond.

Fifty years ago, the Supreme Court held in Brulotte v. Thys Co., 379 U.S. 29 (1964) that a license agreement requiring royalty payments for use of a patented invention after expiration of the patent term is unlawful per se.

In a recent decision, the International Trade Commission rejected a petitioner’s attempt to use allegations of unfair competition and unfair acts as a possible way of working around the Federal Circuit’s bar on claims of induced infringement.

Filing an appeal brief with the Patent Trial and Appeal Board (PTAB) can be an effective way to advance prosecution and secure allowable claims. Last November, we summarized Tips for Writing Effective PTAB Briefs to help propel applicants to PTAB victory.

In an order released on March 19, 2015, U.S. District Court Judge Richard Seeborg of the Northern District of California denied Amgen’s motion for judgment on the pleadings as well as its request for a preliminary injunction to prevent Sandoz from marketing its drug Zarxio®.

Applicants identified upon a U.S. patent application’s filing can impact the ownership rights to the patent application throughout prosecution. Prior to implementation of relevant aspects of the America Invents Act (AIA) on September 16, 2012, patent application Applicants could only be Inventors. 

The U.S.I.T.C. instituted its first investigation under its 100-day pilot program for early determination of a specific potentially case-dispositive issue.