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Patent Law

Patent Docs

Focuses on recent developments in biotechnology and pharmaceutical patent law, offering updates regarding changes in Patent Office rules and procedures that affect biotech/pharma patent prosecution, providing summaries of recent court decisions that impact biotech/pharma patent litigation and prosecution, and monitoring newly filed biotech/pharma patent litigation. In addition, Patent Docs highlights recently issued biotech/pharma patents, and reports on biotech/pharma news.
By Donald Zuhn, Kevin Noonan, Chris Singer, Sherri Oslick, and Jason Derry

Post Frequency: 20.5/day

Last Entry: April 01, 2011 at 01:59:00

StemCells' Patents Survive Reexam -- StemCells and Neuralstem Differ on Extent of Changes

Posted on April 23, 2008
By Donald Zuhn -- Last week, StemCells, Inc. announced that the U.S. Patent and Trademark Office had issued Notices of Intent to Issue Ex Parte Reexamination Certificates with respect to the Palo Alto-based biotech company's U.S. Patent Nos. 5,851,832 and 6,497,872...

No End to Fee Diversion?

Posted on April 22, 2008
By Donald Zuhn -- On April 1st, we reported on a press release issued by the Biotechnology Industry Organization (BIO) concerning a report from the Coalition for Patent Fairness that the Senate patent reform bill (S. 1145) would soon be coming to a vote...

Court Report

Posted on April 20, 2008
By Sherri Oslick -- About Court Report: Each week we will report briefly on recently filed biotech and pharma cases, and a few interesting cases will be selected for periodic monitoring. Sepracor Inc. et al. v. Synthon Pharmaceuticals, Inc. et al. 5:08-cv-00179; filed April 11, 2008 in the Eastern District...

Conference & CLE Calendar

Posted on April 20, 2008
April 25, 2008 - Patent Claim Construction (Law Seminars International) - Atlanta, GA April 30, 2008 - Public PAIR and Data-Mining Requests Webcast (U.S. Patent and Trademark Office) April 30-May 1, 2008 - Pharma/Biotech Collaborative Agreements (American Conference Institute) - San Francisco, CA May 15, 2008 - The Federal Circuit:...

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USPTO News: Pilot Program Begins for Submission of ?Complex Work Units? in Electronic Formats

Posted on April 18, 2008
By Christopher P. Singer -- In an April 14, 2008 pre-O.G. notice the U.S. Patent and Trademark Office made a request for voluntary submission of electronic Complex Work Unit (CWU) files as part of its Pilot Program. This program became effective on April 14, 2008 and is intended to alleviate...

Innogenetics and Abbott Settle Dispute over HCV Technology

Posted on April 17, 2008
By Robert Dailey -- Innogenetics and Abbott have agreed to settle their dispute over Innogenetics' patented methods for genotyping HCV. Abbott will shell out $9.5 million, including on-going royalty payments for each test sold by Abbott. We have previously discussed developments in the litigation between Innogenetics and Abbott over U...

BIO Files Amicus Brief in Bilski Case

Posted on April 15, 2008
By Kevin E. Noonan -- Perhaps surprisingly, the Biotechnology Industry Organization (BIO) filed an amicus brief last week in In re Bilski, a case under en banc consideration by the Federal Circuit over a Patent Office determination that the claimed subject matter (a method of managing the risk of bad...

USPTO News: PTO Announces New Program to Reduce Pendency and Improve Patent Quality

Posted on April 15, 2008
By Donald Zuhn -- On Monday, the U.S. Patent and Trademark Office announced that it will be initiating a new pilot program that is expected to reduce application pendency and improve patent quality. The First Action Interview pilot program, which will begin on April 28th and run for six months,...

Glasses Half-full or Half-empty: Hoffman-LaRoche's Different Interpretation of Pfizer v. Teva

Posted on April 15, 2008
By Kevin E. Noonan -- Before Hoffmann-LaRoche filed its Notice of Appeal in the Court of Appeals for the Federal Circuit last week, appealing the preliminary injunction Judge William Young entered that prevents Roche from selling its Mircera� drug product (a form of recombinant EPO that has been covalently linked...

Northwestern JTIP Third Annual Symposium

Posted on April 15, 2008
The Law Journal of Technology & Intellectual Property at the Northwestern University School of Law will be holding its Third Annual Symposium on April 18, 2008 in Chicago, IL. The Symposium, entitled "Following the Yellow Brick Road: The Future of Intellectual Property," will consist of the following sessions: ? IP...

Court Report

Posted on April 13, 2008
By Sherri Oslick -- About Court Report: Each week we will report briefly on recently filed biotech and pharma cases, and a few interesting cases will be selected for periodic monitoring. Ortho-McNeil Pharmaceutical, Inc. v. Mylan Pharmaceuticals, Inc...

Conference & CLE Calendar

Posted on April 13, 2008
April 25, 2008 - Patent Claim Construction (Law Seminars International) - Atlanta, GA April 30, 2008 - Public PAIR and Data-Mining Requests Webcast (U.S. Patent and Trademark Office) April 30-May 1, 2008 - Pharma/Biotech Collaborative Agreements (American Conference Institute) - San Francisco, CA May 15, 2008 - The Federal Circuit:...

BIO Commends Senator Specter for Patent Reform Stance

Posted on April 11, 2008
By Donald Zuhn -- On April 1st, we reported on a statement issued by Biotechnology Industry Organization (BIO) President and CEO Jim Greenwood (at right) disputing a report from the Coalition for Patent Fairness that the Senate patent reform bill (S. 1145) would be coming to a vote in the...

Cantor Fitzgerald VP Comments on Markush Rules

Posted on April 11, 2008
By Donald Zuhn -- Last month, we reported on the U.S. Patent and Trademark Office's supplementary notice concerning its Alternative Claims Notice of Proposed Rule Making (frequently referred to as Markush rules). While the Patent Office asserted that the new alternative claims rules "involve rules of agency practice and procedure...

Hoffmann-LaRoche Can't Wait, Files Notice of Appeal to the Federal Circuit

Posted on April 11, 2008
By Kevin E. Noonan -- Hoffmann-LaRoche has apparently given up its attempts to convince Judge William Young to lift an injunction preventing it from selling its Mircera� drug product (a form of recombinant EPO that has been covalently linked to polyethylene glycol), and has filed a Notice of Appeal with...

USPTO News: Webcast Regarding Public PAIR Issues

Posted on April 11, 2008
By Christopher P. Singer -- Recently, the U.S. Patent and Trademark Office announced that it will hold a webcast on April 30, 2008 at 3:00 pm (EDT) in order to address various issues concerning Public PAIR. In particular, the Office will address the recent access and response time problems that...

Antigenics Announces First-Ever Approval for "Personalized" Cancer Treatment

Posted on April 09, 2008
By Mark Chael -- On April 8th, Antigenics Inc. announced that the Russian Ministry of Public Health had approved Oncophage� for the treatment of intermediate-risk kidney cancer. According to Antigenics, Oncophage� is derived from a discrete tumor and contains the antigenic fingerprint of the cancer cells that make up that...

Ortho-McNeil Pharmaceutical, Inc. v. Cobalt Pharmaceuticals Inc. (Fed. Cir. 2008)

Posted on April 09, 2008
By Donald Zuhn -- Last week, the Federal Circuit issued an opinion in Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc. In Mylan Laboratories, the Federal Circuit determined that the District Court for the District of New Jersey properly construed claim 1 of U...

Caraco Pharmaceutical Laboratories, Ltd. v. Forest Laboratories, Inc. (Fed. Cir. 2008)

Posted on April 08, 2008
By Kevin E. Noonan -- The echoes of the Supreme Court's recent spate of reversing the Federal Circuit continue to reverberate, and perhaps nowhere so loudly as in the Federal Circuit's developing declaratory judgment jurisprudence. Or perhaps it would be more accurate to say in the total collapse of that...

Novartis Acquires 25% Stake in Alcon from Nestl�

Posted on April 08, 2008
By Christopher P. Singer -- In April 7, 2008 press releases from Novartis AG and Alcon Inc., the companies announced that Novartis has reached an agreement with Nestl� S.A. which provides Novartis with the right to acquire majority ownership of Alcon Inc...

Codon Devices and Blue Heron Biotechnology Settle Patent Suit

Posted on April 08, 2008
By Sherri Oslick -- Last week, Codon Devices Inc. and Blue Heron Biotechnology agreed to settle their pending lawsuit in which Codon alleged that a series of patents licensed to Codon were infringed through Blue Heron?s manufacture and use of its GeneMaker� gene synthesis platform...

EPO Search Fee Increase

Posted on April 08, 2008
By Christopher P. Singer -- On April 1, 2008, the European Patent Office (EPO) began increasing fees associated with the searches it performs when acting as the International Searching Authority (ISA) for international applications filed through the PCT...

Commerce Secretary "Entirely Wrong" on Inequitable Conduct Reform

Posted on April 08, 2008
By Donald Zuhn -- Last week, we reported on a letter sent by Secretary of Commerce Carlos Gutierrez to Senators Patrick Leahy and Arlen Specter, in which the Secretary reaffirmed the Bush Administration's support for the Applicant Quality Submission (AQS) provision of the Senate patent reform bill (S...

Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc. (Fed. Cir. 2008)

Posted on April 07, 2008
By Donald Zuhn -- Last week, the Federal Circuit determined that the District Court for the District of New Jersey properly construed claim 1 of U.S. Patent No. 4,513,006 to encompass Plaintiff-Appellee Ortho-McNeil Pharmaceutical, Inc.'s epilepsy drug topiramate, and affirmed the District Court's decision to (1) permanently enjoin Defendants-Appellees Mylan...

Court Report

Posted on April 07, 2008
By Sherri Oslick -- About Court Report: Each week we will report briefly on recently filed biotech and pharma cases, and a few interesting cases will be selected for periodic monitoring. Sepracor Inc. et al. v. Sandoz, Inc. 3:08-cv-01584; filed March 31, 2008 in the District Court of Delaware Infringement...

Conference & CLE Calendar

Posted on April 07, 2008
April 7, 2008 - Successful Multilateral Patents (Law Seminars International) - Arlington, VA April 10-12, 2008 - 23rd Annual Intellectual Property Law Conference (American Bar Association) - Arlington, Virginia April 25, 2008 - Patent Claim Construction (Law Seminars International) - Atlanta, GA April 30-May 1, 2008 - Pharma/Biotech Collaborative Agreements...

Last Call to Voice Your Opposition to AQS Provision

Posted on April 05, 2008
By Donald Zuhn -- Yesterday, we reported on a letter sent by Secretary of Commerce Carlos Gutierrez to Senators Patrick Leahy and Arlen Specter, in which the Secretary reaffirmed the Bush Administration's support for Section 11 of the Senate patent reform bill (S...

Department of Commerce Sends Senators Second Letter on Patent Reform Bill

Posted on April 04, 2008
By Donald Zuhn -- In February, we reported on a letter sent by Nathaniel Wienecke, the Assistant Secretary for Legislative and Intergovernmental Affairs of the U.S. Department of Commerce, to Senator Patrick Leahy (D-VT), Chairman of the Senate Judiciary Committee, expressing the Bush Administration?s views on the Senate patent reform...

War is Peace, Freedom is Slavery, Ignorance is Strength

Posted on April 03, 2008
By Kevin E. Noonan -- And all patent rights are theft, according to The New York Times. In but one small story on its business pages, the "newspaper of record" misstates the facts, impugns the law, and slanders one of the greatest American inventors who ever lived (see "Edison ...

USPTO News: Patent Prosecution Highway Extended to IP Australia

Posted on April 03, 2008
By Christopher P. Singer -- In an April 1, 2008 notice, the U.S. Patent and Trademark Office announced that the Intellectual Property Office of Australia (IP Australia) will launch sometime this month a new trial cooperation initiative with the USPTO as part of the Patent Prosecution Highway (PPH) Pilot Program...

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