Intellectual Property Archives

Jan 30, 2019

Adjusting Patent Term Adjustment: 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 Patent Term Adjustment (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 a PTA reduction that exceeded the statutory limitations. PTA is calculated by adding delay in prosecution attributable to the USPTO and subtracting delay attributed to the applicant. The net number of days is awarded as PTA to the granted patent. Supernus Pharmaceuticals,… 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 analysis for patent examiners and administrative patent judges in applying the Alice/Mayo test. Analysis under the Revised Guidance begins with a consideration of whether the claim limitations recite a process, a machine, a method of manufacture, or a composition of matter. This is Step 1… Read more

Jan 16, 2019

New Guidelines for Patent Subject Matter Eligibility from the USPTO

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 Myriad, Mayo, and Alice cases. As a result of the trio of cases, the USPTO had developed the Alice/Mayo test to determine subject matter eligibility. The Alice/Mayo test was a two-step test, with Step 1 determining whether the claim is directed to a process, machine,… Read more

Jan 9, 2019

Supreme Court Hears Arguments on On-Sale Bar for Patentability

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 (“AIA”) in 2011, the question had been well settled. Section 102 of the Patent Act, defining conditions for patentability, stated that a person was entitled to a patent for an invention unless the invention was “in public use or on sale in this country, more… Read more

Jan 2, 2019

Happy New Year from the SGR Intellectual Property Dept.

Intellectual Property Practice - We Want Your Feedback

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 great pleasure in playing a role in their success. We continue to publish our weekly IP newsletter, the “SGR Intellectual Property Brain Trust,” with timely articles chosen from across the world of IP, as well as original content from our IP professionals. In the past,… 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 the patent term extension (PTE) provisions of 35 U.S.C. § 156. The court previously addressed a similar question in the case of Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317 (Fed. Cir. 2007), in which it held that obviousness-type double patenting does not… Read more

Dec 13, 2018

Music to Our Ears: The Music Modernization Act of 2018

At its most fundamental, the law of copyright is literally that – a protective limitation on the right to copy the original creative expression of authors and artists. And, as is the case of law in general, it has always been a struggle for copyright law to keep pace with science and technological advances. In their time, the introduction of the photocopy machine and the VCR problematically made duplication possible at the push of a button. More recently, music digitization and the internet have made the unauthorized dissemination and sharing of copyrighted material a stress test on the royalty collection… Read more

Dec 4, 2018

When Is It Okay To Label My Product As “Made In USA”?

In this era of “America First,” there is a major push to increase the amount of manufacturing that happens in the United States, and buying American-made goods is viewed by many to be an act of patriotism. As a result, the promotion of a product as being “Made in USA” or “Made in America” can create a real marketing advantage that helps to boost the sales of the product. But when can a marketer properly label or promote a product as “Made in USA”? Under U.S. laws and regulations, as a general rule, if a product undergoes its last substantial… 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 substantially similar to the plaintiff’s design – a standard which the Federal Circuit noted was analogous to the standard for design patent infringement: “where infringement cannot be found unless an ordinary observer would perceive that the ‘two designs are substantially the same.’” Given the tie… Read more