In Re Cellect – ODP Defense Does Not Impact The Expiration Date of A Patent With Both PTA and PTE In The Absence of A Terminal Disclaimer

Attorney: Richard D. Kelly
September 15, 2023

The Federal Circuit in In re Cellect, Appeals Nos. 2022-1293, 2022-1294, 2022-1295, 2022-1296 held that the earliest patent to expire in a series of patents subject to obviousness-type double patenting (ODP) controls, i.e., the PTA in the later to expire patents is lost and all patents are invalid for double patenting. In Cellect the relation between the patents is shown below:

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USPTO Announces Revised Director Review Process

Attorney: Richard D. Kelly
July 26, 2023

On July 24, the USPTO announced a revised Director interim review process. Although the USPTO in July 2022 had requested comments on its director review process and the comment period was closed on October 19, 2022, the USPTO has still not formalized the process or published any proposed rules to implement it.  Instead, it revised its interim review process.<... Read more

Show Me the Money – USPTO Fee Proposals Include Fee Provisions to Impact Applicant Behavior

Attorney: Richard D. Kelly
June 19, 2023

The USPTO has opened the discussion on its fees to be effective in 2025. While the PTO is to be applauded for getting ahead of the fee curve, unfortunately some proposed fees are not only outrageous but beyond the PTO’s fee setting authority. The PTO in its fee setting objectives listed as one objective to “Promote efficient operations and efficient filing behaviors.” [Emphasis added]. The PTO’s executive summary quoted in this post is found here along with other supporting documentation. The PTO’s fee setting authority is not unbounded but restricted by several laws. First, the House Report describes the fees in 35 U.S.C. § 41 as the reference point for future adjustments. It provides in part for these fees for over 3 independent claims with a column added for 45% inflation since 2011[1]:<... Read more

PTAB Finds Teaching Away in Non-Overlapping Range

Attorney: Derek Lightner, Ph.D.
April 10, 2023

On March 15, 2023, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) issued an opinion in the appeal of US Appl. Ser. No. 15/395,642, Ex parte Chris Fish (Appeal 2022-001172, Technology Center 1700, Appellate Patent Judges Adrienne Lepiane HANLON, Catherine Q. TIMM, and Jeffrey B. ROBERTSON) reversing Examiner Nathan H. EMPIE’s finding of obviousness based on an alleged motivation to modify beyond the range taught by the prior art.<... Read more

PTAB Reverses §101 and §103 Rejections for Plant Extract

Attorney: Grace Kim
December 13, 2022

Update by Grace Kim and Sara Pistilli, PharmD.

On December 6, 2022, the Patent Trial and Appeal Board (PTAB) overturned a rejection of a claim to a plant extract based on patent ineligible subject matter (Appeal 2022-001062). Claim 1 of the application US 15/521,212 (the 212 Application) is directed towards:<... Read more