Patent Law Weblog
recent posts
- Retired Judges File Amicus Brief in Support of Judge Newman
- Hikma v. Amarin at the Supreme Court: The Parties’ Opening Briefs
- Teva Pharmaceuticals International v. Eli Lilly & Co. (Fed. Cir. 2026)
- USPTO Extends Artificial Intelligence Search Automated Pilot Program (ASAP!)
- USPTO Announces That It Has Turned the Corner on Unexamined Application Backlog
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Month: October 2019
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By Kevin E. Noonan and James L. Lovsin — Today in Arthrex, Inc. v. Smith & Nephew, Inc., a three-judge panel of the Federal Circuit held that the way the U.S. Patent and Trademark Office has appointed administrative patent judges at the Patent Trial and Appeal Board violates the Appointments Clause of the Constitution (Art.…
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By Kevin E. Noonan — Section 112 of the Patent Act as codified, entitled "Specification" in the statute, specifies the amount of disclosure required to support a patent claim (among other requirements). Section 112(a) contains three requirements: written description, enablement, and best mode (although the latter has been in something of a state of limbo…
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By Kevin E. Noonan — Ever since the Supreme Court's decision in Dickerson v. Zurko, decisions from the U.S. Patent and Trademark Office (whether in ex parte examination or any of the many varieties of actions before the Patent Trial and Appeal Board) involving questions of fact are treated on appeal with almost overwhelming deference. …
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Functional Language in Device Claim Ignored for Patentability Purposes By Joseph Herndon — The U.S. Patent and Trademark Office Patent Trial and Appeal Board recently issued a decision indicating that certain claims of a patent directed to the popular PopSockets are invalid. In Quest USA Corp. (Petitioner) v. PopSockets LLC (Patent Owner) (Case IPR2018-00497), the…
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By Kevin E. Noonan — Any party who has ever come before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) quickly realizes the extent to which the Board enforces procedural niceties. This tendency sometimes leads to logically incongruous results; for example, in its St. Regis Mohawk Tribe v. Mylan decision, the…
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McDonnell Boehnen Hulbert & Berghoff LLP will be offering a live webinar entitled "Drafting Life Sciences Claims to Satisfy the Written Description and Support Requirements in the U.S. and Europe" on November 7, 2019 from 10:00 am to 11:15 am (CT). In this presentation, Patent Docs author and MBHB attorney Donald Zuhn, MBHB attorney Nathaniel…
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The Intellectual Property Owners Association (IPO) Open Source, Software Related Inventions, and Trade Secrets Committees will offer a one-hour webinar entitled "Inventorship: Lessons from Recent Disputes" on October 30, 2019, from 2:00 to 3:00 pm (ET). Manisha Desai of UCB Pharmaceuticals, Brian Hubbard of Condo Roccia, and Kevin Noonan of McDonnell Boehnen Hulbert & Berghoff…
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By Kevin E. Noonan — Since the present reissue statute was enacted as part of the 1952 Patent Act, the Patent Office has granted almost eight million utility patents and less than twenty-five thousand reissue patents. Nevertheless, reissue practice, while arcane, is a useful tool for a patentee to correct patents that claim too little…
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By Joshua Rich — When post-grant proceedings under the America Invents Act began, the USPTO's Patent Trial and Appeals Board ("PTAB") treated motions to amend in those proceedings like most other motions: the movant, here the patentee, bore the burden of production of evidence and the burden of persuasion on the issue of patentability of…
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Thirteen years ago today, we began publishing Patent Docs, a weblog that initially focused on recent developments in biotech and pharma patent law, and has since expanded to cover all things patent-related. After thousands of posts and millions of words; after the claims-and-continuation rules debacle; the America Invents Act and all the bills that preceded…
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