Category Archives: The Patent Office

Patentee-Friendly Claim Construction in the UK Courts?

Author: Hazel Ford Ph.D.
Editor:  Martin D. Hyden

The UK Supreme Court has handed down its judgment at the conclusion of a long-running dispute between Eli Lilly and Actavis.  The cases related to Eli Lilly’s patent, which claims the use of the drug pemetrexed disodium in combination with vitamin B12 in the treatment of cancer.  Actavis sought declarations of non-infringement for its proposed products which used pemetrexed diacid, pemetrexed ditromethamine or pemetrexed dipotassium in place of pemetrexed disodium.  Continue reading

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New EPO Rules For Patenting Plants and Animals

Author: Hazel Ford Ph.D.
Editor:  Martin D. Hyden

The EPO has clarified its approach to the patentability of plants and animals by making changes to its rules.

Article 53(b) EPC derives from an EU Directive (Article 4(1) of Directive 98/44 EC) and excludes from patentability “essentially biological processes for the production of plants or animals”.  According to the EPO’s Enlarged Board of Appeal, this excludes from patentability any process that contains the steps of sexually crossing the whole genomes of plants and then selecting the desired progeny plants.  However, the Enlarged Board concluded in decisions G 2/12 and G 2/13 that the exclusion only applies to process claims, and not to the plants that are produced by those processes.  Until recently, the EPO had followed this practice during examination and in post-grant oppositions. Continue reading

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Reissue Basics

Author: Jessica L. Roberts
Editor:  Adriana L. Burgy

Reissue applications are valuable tools for correcting defects in issued patents.  Reissue applications are used to correct a wide variety of errors that are more substantive than those which may be corrected by simply requesting a Certificate of Correction.  A patentee surrenders their patent, pays a fee, and then reissues the invention disclosed in the original patent with the defects corrected for the unexpired part of the term of the original patent.  Continue reading

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Five Fun (!) Facts About US Design Patent Examination That You Probably Didn’t Know

Five Fun (!) Facts About US Design Patent Examination That You Probably Didn’t Know

Author: Elizabeth D. Ferrill
Editor: Razi Safi*

Design patent examination has been subject to many recent changes at the USPTO, including changes in the application backlog and foreign filing.  While design patents made up just under 8.0% of the patents issued in 2015, the trends in design patent examination are still instructive, especially when compared to utility patent examination.

Fun Fact No. 1.  The backlog for most patent applications is decreasing; meanwhile, the design application backlog is increasing.

In May 2017, there were only 542,840 unexamined utility, plant, and reexam patent applications pending¾a 67,000 plus reduction from October 2014.  (Remember that as patents are examined, more are filed, so this means that not only did the PTO keep up with the new filings, it also chipped away at the backlog.) (See Patents Dashboard).  Unfortunately, for designs, the backlog has increased during this same time period from 38,094 unexamined design applications in October 2014 to 42,883 as of May 2017.  There is hope for the future, as the technology center responsible for designs has been hiring and now boasts 187 patent examiners. Continue reading

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The Essentiality Test – Falling Out of Favour at the EPO?

Author: Katherine Banks Ph.D.
Editor:  Hazel Ford Ph.D.

The European Patent Office (EPO) has a notoriously strict approach when considering amendments to patent applications.  If an amendment extends the subject matter beyond the content of the application as filed, then the amendment is unallowable under Article 123(2) EPC.  This is assessed based on the “gold standard” test, which examines whether the skilled person would regard the amended subject-matter to be directly and unambiguously derivable from the application as originally filed.  Continue reading

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