Jan 30, 2019

Adjusting Patent Term Adjustment (PTA). Fed. Cir. Makes Additional PTA Possible.


On January 23, 2019, the Court of Appeals for the Federal Circuit significantly altered the rules concerning the possible amount of PTA available to patentees.  In Supernus Pharmaceuticals, Inc. v. Iancu, WL 286925 (Fed. Cir, 2019), the Federal Circuit held that the United States Patent and Trademark Office (USPTO) exceeded its rulemaking authority by assessing… Read more

Jan 24, 2019

More on the Revised Subject Matter Eligibility Guidance


In a recent edition of our IP newsletter, we introduced the U.S. Patent and Trademark Office’s (USPTO) new guidelines for subject matter eligibility.  Below we provide additional thoughts and strategies for pursuing patent applications in light of these new guidelines. The “2019 Revised Subject Matter Eligibility Guidance” (Revised Guidance), effective January 7, 2019, varies the… Read more

Jan 16, 2019

New Guidelines for Patent Subject Matter Eligibility from the USPTO

Step Blog

On January 7, 2019, the new guidelines for patent subject eligibility went into effect at the United States Patent and Trademark Office (“USPTO”). These guidelines, titled “2019 Revised Patent Subject Matter Eligibility Guidance” (herein “2019 Guidelines”), were the fifth update issued by the USPTO regarding subject matter eligibility since the Supreme Court’s opinions in the… Read more

Jan 9, 2019

Supreme Court Hears Arguments on On-Sale Bar


Does a secret sale of a patented invention that occurred before the filing of a patent application count as invalidating prior art? That question was the recent focus of oral arguments before the Supreme Court recently in the case of Helsinn Healthcare S.A. v. Teva Pharmaceutical USA. Before the passage of the America Invents Act… Read more

Jan 2, 2019

Happy New Year from the SGR IP Dept.


As we enter into 2019, the SGR Intellectual Property (IP) Dept. continues to serve a diverse array of clients of all sizes and types, from small start-ups to large multinational companies, both public and private, as well as universities.  We are proud of the impressive list of clients with which we work, and we take… Read more

Dec 20, 2018

Federal Circuit Finds that “Effective” Extension of Term for Additional Patent is a “Permissible Consequence” of Patent Term Extension Provisions of 35 U.S.C. §156


Earlier this month, the United States Court of Appeals for the Federal Circuit issued an opinion in the case of Novartis AG et al., v. Ezra Ventures LLC, case number 2017-2284, again finding that the judicially created, non-statutory, obviousness-type double patenting doctrine may not be used to invalidate or cut-short additional patent term conferred under… Read more

Nov 28, 2018

Addressing Cybersquatting in a Post-WHOIS Blackout World


Imagine a customer complains to you about a product they purchased online from YOURBRAND.COM.  Only you don’t own this domain name, and the problematic product is a counterfeit. You need this website to be shut down immediately.  In the past, your first move may have been to locate the owner of the website, using WHOIS,… Read more

Nov 15, 2018

The Intersection of Trade Dress and Design Patents in Product Design


On October 30, 2018, the United States Court of Appeals for the Federal Circuit vacated and remanded the International Trade Commission’s decision regarding the trade dress infringement of Converse’s design in its Chuck Taylor shoes (see below). In a split opinion, the Court held that trade dress infringement occurs only if the defendant’s design is… Read more