Feb 21, 2019

Legal Update: On-Sale Bar Applies to Secret Sales


On January 22, 2019, the Supreme Court held that amendments by the America Invents Act (AIA) to the U.S. Patent Act did not exclude secret sales from the on-bar sale doctrine, meaning such sales that occur before a patent’s filing can lead to its invalidation. The issue was whether the amendment that added the phrase “or otherwise available to the public” changed the meaning of “on sale”, such that the claimed invention of the sale itself had to be publicly disclosed in order for the sale to be an invalidating prior art event. (Read the original article on this topic.)… Read more

Jan 24, 2019

More on the Revised Subject Matter Eligibility Guidance

patent applications: patent definition

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

Alice/Mayo Test Steps 1 & 2

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

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