Tag Archives: Utility

The Safe Harbor Provision of 35 U.S.C. § 121 Against Double Patenting Rejections Just Got A Little Less Safe

The Safe Harbor Provision of 35 U.S.C. § 121 Against Double Patenting Rejections Just Got A Little Less Safe

Author: Jeffrey M. Jacobstein
Editor: Eric P. Raciti

Ever since the Federal Circuit held that a later-issuing but earlier-expiring patent could serve as an obviousness-type double patenting (OTDP) reference in Gilead Sciences, Inc. v Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2011), Applicants and Patentees have found themselves facing many more double patenting rejections.  Even continuing applications filed in a single portfolio run the risk of receiving OTDP rejections if the claims of the subject and reference patents are not patentably distinct.  See AbbVie Inc. v. Kennedy Inst. of Rheumatology, 764 F.3d 1366 (Fed. Cir. 2014).  The court in Kennedy explained (in dicta) that patents sharing a common priority chain “still can have different patent terms due to examination delays at the PTO.”  AbbVie, 764 F.3d at 1373.  So, patent term adjustment accumulated during examination could be in jeopardy when the subject claims overlap those in a continuation. Continue reading

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RecogniCorp v. Nintendo—Alice Keeps Playing at the Federal Circuit

RecogniCorp v. Nintendo—Alice Keeps Playing at the Federal Circuit

Author: Elliot C. Cook
Editor: J. Derek McCorquindale

In the nearly three years since Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Federal Circuit has analyzed the issue of patent-eligibility in the context of numerous distinct technologies. The court’s precedent applying Alice addresses patents directed to financial services, Internet content filtering, database maintenance, payment-based content access, animated facial gesturing, physical object tracking, distributed data processing, and more. One takeaway is that no technological discipline is, per se, eligible or ineligible. Instead, the outcomes of these cases are better explained by the specific inventions at issue and how they are claimed. RecogniCorp, LLC v. Nintendo Co., Ltd., No. 2016-1499 (Fed. Cir. Apr. 28, 2017), confirms this lesson. Continue reading

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Is This the Beginning of the End for Accelerated Examination?

Author: Amanda K. Murphy, Ph.D.
Editor: Stephanie M. Sanders

In its August 16th Notice identifying a number of updates to the accelerated examination (AE) program, the USPTO announced that it also plans to seek public input on whether it should continue to offer the AE program at all. Under the AE program, which was implemented in 2006, an application will be advanced out of turn for examination if the applicant files a petition to make special with an appropriate showing. This showing requires the applicant to meet several conditions, including: (1) conducing a pre-examination search; (2) providing an accelerated examination support document (AESD); and (3) ensuring the application is complete under 37 C.F.R. § 1.51 at the time of filing. Citing the relatively low usage of the AE program since the implementation of Track I (the Notice reports that the USPTO has received fewer than 200 AE requests annually since 2011), the USPTO indicated that it plans to publish a request for comments on whether there is any value in retaining the AE program in view of the more popular Track I program.

The Notice also announced a number of updates to the AE program to reflect the changes in the law and examination practice that accompanied the America Invents Act (AIA), the Patent Law Treaties Implementation Act implementing the provisions of the Patent Law Treaty, and the USPTO’s adoption of the Cooperative Patent Classification System (CPC). These amendments:

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Effective Filing Date: What is that again?

Author:  Amanda K. Murphy, Ph.D.
Editor: Leslie A. McDonnell

The “effective filing date” for a claimed invention in a patent or application for patent is the earlier of: (1) the actual filing date of the patent or the application containing a claim to the invention; or (2) the filing date of the earliest priority application (i.e., the earliest filed provisional, nonprovisional, international, or foreign application) to which a patent or patent application is entitled to a right of priority for the claimed invention. See 35 U.S.C. § 100(i). Effective filing date is evaluated on a claim-by-claim basis. In general, this means a claim is entitled to the filing date of the earliest filed application supporting that claim. Continue reading

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