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Thinking About Patents

Patent Law Blog

Reviewing the complex area of patent law.

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Mar 04, 2019

Supernus: Delays Out of the Applicant’s Hands Are Not Applicant Delays

The term of a U.S. patent is typically twenty years.  However, the patent term can be altered as a result of certain Patent Office delays (patent term adjustment) and certain regulatory delays (patent term extensions).  For the former, the Patent Office will adjust the term on a day‑for‑day basis: one day of delay results in one day of adjustment.  » Read More

Feb 11, 2019

Developing IP Strategy for FDA-Regulated Drug Products Requires Special Considerations

Despite the widely diverging needs of the different industries that make use of the US patent system, US patent law applies essentially the same rules to innovations from all technology fields. This means that drug and biotechnology-based inventions are treated no differently by the U.S. » Read More

Nov 30, 2018

Patents and Cannabis

Patentability

The position of the United States Patent and Trademark Office (USPTO) on trademarks for cannabis-related goods and services is discussed in my colleague’s blog post, “Trademark Registration for Cannabis Trademark Owners a Legal Haze.”

Unlike in the case of trademarks, patentability of cannabis-related products and processes is much more clear-cut. » Read More

Oct 19, 2018

Calculating Patent Term Adjustment (PTA) – An Overview

As discussed in my previous post, Patent Term Adjustment (PTA) under 35 U.S.C. §154(b) and Patent Term Extension (PTE) under 35 U.S.C. §156 provide for extensions on the standard patent term, which can be very valuable for products that have long development and/or regulatory approval lifecycles, such as in the case of pharmaceuticals. » Read More

Jul 16, 2018

When Will My Patent Expire? – Calculating Your Patent Term – A Review

The term of a patent defines the time during which the patent is in force and infringing activities may be acted upon.

Factors to Consider for Patent Term Calculations

The standard term of U.S. patents (other than design patents) issued from applications filed on or after June 8, 1995, is defined by the “twenty-year term,” which is subject to adjustment due to various factors:

  • type of application (utility, design, plant);
  • filing date of the application;
  • issue (grant) date of the patent;
  • benefit claims under 35 U.S.C.
» Read More

Jul 03, 2018

“Commensurate in Scope with the Claims”: Misphrased?

If you’ve been prosecuting patents for any significant length of time, you’ve probably been hit with the objection that your data, while surprising and unexpected, are not “commensurate in scope with your claims.” Maybe you have some understanding of what this phrase means. » Read More

Jun 11, 2018

Effective and Efficient Filings of Your Design Patent Application/Registration (U.S.A.)

In my prior post I discussed benefits of seeking design patent protection for your products, which can often provide effective protection for products to be imported and marketed in the United States of America. This protection can be exclusive of but concurrent with any “regular utility” patent applications filed in the USA.  » Read More

May 29, 2018

Inventorship: If it Walks Like a Dog, Barks Like a Dog, and Looks Like a Dog, it Must Be a Dog

At the beginning of May, the Federal Circuit weighed in on a wacky inventorship dispute in In re VerHoef.

When it comes to co-inventorship, it can be in one’s best interest to play nicely.

It seems, the main inventor, Jeff H. » Read More

May 07, 2018

Satisfying the Duty of Disclosure – Why and When to File Information Disclosure Statement (IDS)

A critical requirement when prosecuting a U.S. patent application is the duty of disclosure (35 C.F.R. §1.56), which is placed on each individual associated with the filing and prosecution of a patent application, to disclose to the U.S. Patent and Trademark Office (USPTO) all information known to that individual to be material to patentability; that is, a reasonable examiner would consider it important in deciding whether to allow the application. » Read More

Apr 16, 2018

The Rise of Blockchain in Patent and Trademark USPTO Filings

Blockchain, also known as distributed ledger technology (DLT), is a digital ledger in which transactions, often made in a cryptocurrency, are recorded chronologically and publicly.  (You can refer to our prior post on blockchain and cryptocurrencies here.)

Although the applications of blockchain technology is most commonly associated with cryptocurrencies, there is a surge of other use cases in the fields of finance, healthcare, arts/entertainment, government, and logistics.  » Read More