Tag Archives: patent validity

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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No Sugar-Coating: Post-AIA Patent on Secret Process Barred by Pre-Filing Sale of Product

August 12, 2024PatentAIA, Artificial Sweeteners, Federal Circuit, Helsinn, International Trade, ITC, On-Sale Bar, paid, Patent Filing Strategy, Patent Harmonization, patent litigation, patent validity, prior art, Secret Processes, Statutory Interpretation, Supreme CourtDennis Crouch

by Dennis Crouch

Although the result could have been guessed, the Federal Circuit has issued an important decision interpreting the scope of post-AIA 35 U.S.C. 102 -- and the meaning of the "claimed invention." Celanese Intl. Corp. v. Intl. Trade Comm'n, 22-01827 (Fed. Cir. August 12, 2024). In particular, the court affirmed the precedent of D.L. Auld -- i.e., the on-sale bar continues to block patenting of an otherwise secret process when the patentee makes pre-filing sales of product made using that process. The ITC had invalidated Celanese' artificial sweetener manufacturing process patent based upon these pre-filing sales. That judgment was thus affirmed on appeal.

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Commenting on the USPTO’s Proposed Rule on Terminal Disclaimers

May 31, 2024Patentdouble patenting, Federal Circuit, obviousness, paid, patent claims, patent enforcement, patent law, patent validity, terminal disclaimers, USPTODennis Crouch

[I have substantially updated this post - correcting a couple of issues from the original and also added info from the letter from former USPTO leaders. - DC 6/1/24]

by Dennis Crouch

As I have previously discussed on Patently-O, 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. Dennis Crouch, Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it), Patently-O (May 9, 2024). Under the proposed rule, a terminal disclaimer will only be accepted by the USPTO if it includes an agreement that the patent will be unenforceable if 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). This proposal has generated significant debate among patent practitioners, with many expressing concerns about its potential impact on innovation and patent rights. It is a dramatic change in practice because the typical rule required by statute is that the validity of each patent claim must be separately adjudged. See 35 U.S.C. § 282(a).

The comment period is open until early July, but a number of comments have already been submitted. And I looked through them in order to get some early feedback. You can read the comments here

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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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Amgen Scores Partial Victory in Efforts to Maintain OTEZLA Exclusivity

April 21, 2023PatentDamages, eligibility, en banc, enantiomers, Hatch-Waxman, obviousness, Orange Book, paid, patent infringement, patent law, patent term extension, patent validity, PDE4 inhibitors, reasonable expectation of success, Section 101, Section 271(e)(1)Holman

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