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HTMLHow Long Is Too Long (or Too Short) for Patent Application Pendency?
Courtenay C. Brinckerhoff; Foley & Lardner LLP;
Legal Alert/Article
July 25, 2014, previously published on July 18, 2014
The USPTO is requesting input on the “optimal” targets for its patent application pendency metrics. The USPTO’s current targets are 10 months to a first Office Action and 20 months to grant or abandonment. The USPTO wants to know if you think these targets too long, too short, or...

 

HTMLFederal Circuit Says Commission Must Toe the Line in Invisalign ITC Case
Courtenay C. Brinckerhoff; Foley & Lardner LLP;
Legal Alert/Article
July 25, 2014, previously published on July 23, 2014
In Align Technology, Inc. v. International Trade Commission, the Federal Circuit held that ITC action that violated ITC’s own regulations warranted vacatur under the Administrative Procedures Act. While the case addresses specific ITC regulations, the same principles apply to other agencies,...

 

HTMLWhy Are Method of Treatment Claims and Method of Manufacture Claims Subject to Scrutiny Under the USPTO Patent Subject Matter Eligibility Guidance?
Courtenay C. Brinckerhoff; Foley & Lardner LLP;
Legal Alert/Article
July 18, 2014, previously published on July 15, 2014
The USPTO has asked for written comments on its patent subject matter eligibility guidance by July 31, 2014. In this article, I discuss why therapeutic method claims and method of manufacture claims should not be subject to scrutiny under the USPTO’s multi-factored § 101 analysis.

 

HTMLFederal Circuit Holds That Even Functional Claims Require Structural Fence Posts
Courtenay C. Brinckerhoff, Jacob D. Moore; Foley & Lardner LLP;
Legal Alert/Article
July 17, 2014, previously published on July 11, 2014
In AbbVie Deutschland Gmbh v. Janssen Biotech, Inc., the Federal Circuit affirmed the district court decision that found AbbVie’s patents directed to anti-IL-12 antibodies invalid for lack of adequate written description. As between the parties, this decision leaves Centocor free to market...

 

HTMLPutting Structure and Function Into Context for USPTO Patent Subject Matter Eligibility Guidance
Courtenay C. Brinckerhoff; Foley & Lardner LLP;
Legal Alert/Article
July 14, 2014, previously published on July 8, 2014
The USPTO’s ”Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, and Natural Products” has been criticized for requiring a product to be markedly different in structure from a product of nature in order to be...

 

HTMLFederal Circuit Looks for a Different Kind of Unexpected Results in BMS v. Teva
Courtenay C. Brinckerhoff; Foley & Lardner LLP;
Legal Alert/Article
July 9, 2014, previously published on July 2, 2014
In Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit affirmed the district court’s finding that BMS’s Baraclude® patent is invalid as obvious. In so doing, the court gave little weight to unexpected results characterized as reflecting a difference in...

 

HTMLUSPTO Asks for Patent Subject Matter Eligibility Comments by July 31, 2014
Courtenay C. Brinckerhoff; Foley & Lardner LLP;
Legal Alert/Article
July 8, 2014, previously published on June 30, 2014
In a June 30, 2014 Federal Register notice, the USPTO requested public comments by July 31, 2014 on patent subject matter eligibility under the recent Supreme Court decision in Alice Corporation Pty. Ltd. v. CLS Bank International and on the USPTO’s March 4, 2014 “Guidance For...

 

HTMLHow the Supreme Court Decision in Alice Corp. v. CLS Bank Undermines the USPTO Subject Matter Eligibility Guidance
Courtenay C. Brinckerhoff; Foley & Lardner LLP;
Legal Alert/Article
June 30, 2014, previously published on June 24, 2014
On June 19, 2014, the Supreme Court issued its decision in Alice Corp. v. CLS Bank International, finding that patents directed to “a computer-implemented scheme for mitigating ‘settlement risk’” were invalid as being drawn to a patent-ineligible abstract idea. Although the...

 

HTMLUSPTO Proposes Revised Patent Term Adjustment Rules for RCEs Under Novartis
Courtenay C. Brinckerhoff; Foley & Lardner LLP;
Legal Alert/Article
June 24, 2014, previously published on June 18, 2014
The USPTO has published proposed rules for calculating Patent Term Adjustment (PTA) for applications in which a Request for Continued Examination (RCE) has been filed, after the Federal Circuit held in Novartis v. Lee that the USPTO’s original rules were not consistent with the PTA statute....

 

HTMLSupreme Court: Generic Computer Implementation Does Not Render Abstract Ideas Patentable
Pavan K. Agarwal, George C. Beck, Courtenay C. Brinckerhoff, Jeanne M. Gills, Justin E. Gray; Foley & Lardner LLP;
Legal Alert/Article
June 24, 2014, previously published on June 19, 2014
On June 19, 2014, the Supreme Court issued its opinion in Alice Corp. v. CLS Bank Int’l, No. 13-298. In a unanimous opinion by Justice Thomas, the Court held, consistent with its precedent, that an abstract idea implemented on a generic computer is patent ineligible subject matter.

 


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