In a per curium order issued under seal May 3, 2023 but recently made public, the Patent Trial and Appeal Board awarded sanctions against Patent Owner, Longhorn Vaccines & Diagnostics, canceling all challenged claims of its five asserted patents for its “egregious abuse of the PTAB process.” Particularly, the Board determined that Patent Owner, through its counsel, failed to meet its duty of candor and fair dealing before the Board by “selectively and improperly” withholding information material to the patentability of the claims challenged in the IPR proceeding.
Daniel Yannuzzi is a partner and Practice Group Leader of the Intellectual Property Practice Group.
On May 18, 2023, the Supreme Court of the United States issued a unanimous decision in the case of Amgen Inc. et al. v. Sanofi, et al., No. 21-757. After a nine-year saga, beginning when Amgen sued Sanofi for allegedly infringing two of its patents in 2014, the Supreme Court held that Amgen’s asserted patents failed to satisfy the enablement requirement under 35 U.S.C. § 112(a), and are thus invalid.…
In June of this year, the US Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not per se generic. (USPTO v. Booking.com). In response, the United States Patent and Trademark Office (USPTO) recently issued Examination Guidelines for examining such “generic.com” terms.
Continue Reading USPTO Issues Guidance on Examination of Generic.com Terms
The Supreme Court granted and consolidated three petitions for writs of certiorari to hear two questions regarding the constitutionality of Administrative Patent Judge (APJ) appointments under the Appointments Clause. These questions are: Whether APJs of the Patent Trial and Appeal Board (PTAB) are principal officers who must be appointed by the President under the Appointments Clause of the Constitution; and whether, if APJs are determined to be principal officers, severing the application of 5 U.S.C. 7513(a) to those judges cures any violation of the Appointments Clause. The Court declined to hear a third question of whether the Court of Appeals in the Arthrex case erred by adjudicating the Appointments Clause question despite the failure of Arthrex to present its Appointments Clause challenge during the PTAB proceedings.
Continue Reading Supreme Court to Decide Constitutionality of PTAB Judge Appointments
The United States Patent and Trademark Office (USPTO) today announced a pilot program for fast-tracking appeals of applications for original utility, design, or plant patents. The so-called “Fast-Track Appeals Pilot Program” is intended to provide a vehicle for advancing applications during the ex parte appeals process before the PTAB (Patent Trial and Appeal Board).
Continue Reading USPTO Announces New Pilot Program to Expedite Appeals Process
On June 11, 2020, USPTO Director Andrei Iancu authorized an initiative that may apply to an applicant who has filed an earlier foreign patent application or a U.S. provisional patent application and has missed the one-year deadline to file a U.S. nonprovisional utility patent application but would still like to obtain the right of the earlier filing date. Typically, the applicant still has two additional months to petition the USPTO to restore this right with a petition fee. The USPTO has authorized an initiative to further extend the two-month period, while waiving the petition fee, in some situations. The initiative also applies to the corresponding six-month deadline to claim priority of a foreign filed design patent application.…
Continue Reading USPTO Announces a New Initiative to Provide Applicants Additional Time to Petition for Restoring a Right of Priority or Benefit
The USPTO has authorized an initiative to prioritize examination of patent applications having COVID-19 uses that would require FDA approval.
Continue Reading USPTO Announces a New Initiative to Expedite Examination of COVID-19 Related Patent Applications
The United States Patent and Trademark Office (USPTO) today announced a new Prioritized Examination Pilot Program for qualified patent applications relating to COVID-19. This program is available without the usual prioritized-examination fees and the USPTO’s goal under the program is to reach final disposition of applications in the program within twelve months from the date prioritized status is granted. However, the USPTO notes that it may be able to reach final disposition in six months if applicants provide more timely responses to notices and actions from the USPTO. This pilot program is limited to a total of 500 accepted requests, but the USPTO may extend or terminate the pilot program at its discretion.
Continue Reading COVID-19 Prioritized Examination Pilot Program Now Available for Small and Micro Entities
On March 31, 2020, the USPTO announced that it is permitting applicants, for delays that are based on the ongoing COVID-19 emergency in the United States, to request a 30-day extension of the time allowed to file certain documents and to pay certain fees. We provided an explanation of this announcement when it was published. Since then, the USPTO provided a form to be used for the “statement of delay” required in claiming a COVID-19-related filing extension. Extensions were originally applicable to due dates falling between March 27 and April 30. The USPTO, on April 28, 2020, extended the applicable period for due dates to June 1, 2020.
Continue Reading USPTO Provides Form for Claiming 30-Day COVID-19 Extensions
A divided Federal Circuit, in a precedential opinion, upheld a lower court’s finding that the claims of US Patent No. 7,774,911 ineligible for patenting under Section 101 because the claims are directed to a law of nature. The ‘911 patent claims relate to methods of manufacturing vehicle driveshaft assemblies.
Continue Reading Today’s Special: Validity Goulash – Serving Up 101 in the Mechanical Arts
The Federal Circuit weighed in on patent subject matter eligibility again last week, finding certain amino-acid containing dietary supplements, and related methods of use, to be patent eligible. In Natural Alternatives Int’l v. Creative Compounds, LLC, the Federal Circuit vacated the decision of the district court in the Southern District of California, which held that several sets of claims issued to Natural Alternatives International (“Natural”) were not directed to patentable subject matter under 35 USC § 101. The district court found the claims not patent eligible following a motion on the pleadings. Although the claims at issue included methods of treatment, composition, and process claims, this entry looks at the court’s decision with respect to methods. The decision could put some wind in the sails of developers of supplements and nutraceuticals.
Continue Reading Federal Circuit Weighs in on Patent Subject-Matter Eligibility of Dietary Supplements