Tag Archives: patent strategy

Family Planning Patent Style: Allergan, Cellect, and the ODP Maze

August 13, 2024PatentAllergan v MSN Labs, Cellect, Continuation Patents, double patenting, Federal Circuit, obviousness, obviousness-type double patenting, paid, Patent Expiration, Patent Families, patent litigation, Patent Portfolio Management, patent strategy, Patent Term, patent term adjustment, patent validityDennis Crouch

by Dennis Crouch

Most U.S. utility patents are (or will eventually be) part of a patent family with at least one other U.S. patent. The recent rise in focus on obviousness type double patenting (ODP) has been unnerving to some, especially with the Cellect decision from 2023 that seemed to greatly expand the risk of family members colliding based upon differing expiration dates due to Patent Term Adjustment (PTA).

The Federal Circuit's new ODP opinion in Allergan USA v. MSN Labs, 24-1061 (Fed. Cir. August 13, 2014), provides some major relief to patent portfolio holders, holding that "a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim having a common priority date." This ruling provides a measure of protection for first-filed patents that receive substantial PTA, shielding them from ODP challenges based on their own continuations sharing the same priority date.

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

May 9, 2024Patentdouble patenting, obviousness, paid, 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.

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Patently-O Bits and Bytes by Juvan Bonni

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

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UPC: First step – Opting-Out

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

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