Tag Archives: patent strategy

Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it)

May 9, 2024Patentdouble patenting, patent law, patent strategy, patent validity, terminal disclaimerDennis Crouch

by Dennis Crouch

The USPTO recently issued a notice of proposed rulemaking that could significantly impact patent practice, particularly in the realm of terminal disclaimers filed to overcome non-statutory double patenting rejections. Under the proposed rule, a terminal disclaimer must include an agreement that the patent will be unenforceable if it is tied directly or indirectly to another patent that has any claim invalidated or canceled based on prior art (anticipation or obviousness under 35 U.S.C. 102 or 103). The new enforceability requirement would be in addition to the existing provisions that require a terminal disclaimer to match the expiration date of the disclaimed patent to the referenced patent and promise enforcement only during common ownership.

This is a major proposal that fundamentally alters the effect of terminal disclaimers. (more…)

Patently-O Bits and Bytes by Juvan Bonni

February 26, 2023Bits and Bytes, Patentpatent damages, patent eligibility, patent jobs, patent law, patent licensing, patent litigation, patent prosecution, patent strategy, patent trendsJuvan Bonni

Recent Headlines in the IP World:

Jason Johnson and Blaze D. Waleski: Offensive and Defensive IP for AI in Health Care (Source: Reuters)
Dr. Lior Shaltiel: United States Patent Office Allows Patent to Exosome Biomedical Company NurExone (Source: Yahoo Finance)
Blake Brittain: Apple, Google Ask Appeals Court for Another Chance to Nix Patent Rule (Source: Reuters)
John Koetsier: Samsung Beats IBM, Apple, Intel, Google For 2022 Patent Crown; 56% Of U.S. Patents Go To Foreign Firms (Source: Forbes)
Terje Solsvik and Essi Lehto: Nokia Signs New 5G Patent Deal with Samsung (Source: Yahoo Finance)
Evelyn Cheng: Huawei Turns to Patents for a Lifeline — Including Those in The U.S. (Source: CNBC)

Commentary and Journal Articles:

Rebecca Robbins: How a Drug Company Made $114 Billion by Gaming the U.S. Patent System (Source: The New York Times)
Paul Stewart: Hostile IP Environment for Inventors Could Hamper US Innovation (Source: Bloomberg Law)
Prof. Sean B. Seymore: Patent Law’s Role in Protecting Public Health (Source: SSRN)

New Job Postings on Patently-O:

UPC: First step – Opting-Out

February 17, 2023Patenteuropean patents, opt-out, patent litigation, patent strategy, unified patent courtDennis Crouch

The launch of the Unified Patent Court (UPC) has been waiting on Germany to formally ratify the UPC agreement. That has now happened.

The court is set to begin operation on June 1, 2023. Folks with European Patents will want to consider whether to file opt-outs for your patents (beginning March 1, 2023). Some patentees with highly valuable patents will likely opt-out because the UPC rules allows competitors to challenge and invalidate the patents. Unlike in the US IPR system, EPO opposition does not appear to create any estoppel against later UPC challenges.