Patent Law Weblog
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Category: Enablement
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By Kevin E. Noonan — An argument could be made that one of the most significant Supreme Court decisions in U.S. patent law in the last thirty years was Dickinson v. Zurko. In that case the Court held that the Federal Circuit was bound by the provisions (5 U.S.C. § 706) of the Administrative Procedures…
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By Kevin E. Noonan — When a prevailing challenger withdraws from an appeal in post-grant proceedings, the Director can intervene under 35 U.S.C. § 143, which is what happened in an appeal in Sage Products, LLC v. Stewart after Challenger Becton Dickinson & Co. ("BD") withdrew after prevailing in having all challenged claims invalidated for…
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By Kevin E. Noonan – On January 10th, the U.S. Patent and Trademark Office published a Notice in the Federal Register (89 Fed. Reg. 1563) regarding proposed Guidance on how the Office will apply the enablement requirement under 35 U.S.C. § 112(a) in light of the Supreme Court's decision last year in Amgen v. Sanofi. In a…
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By Kevin E. Noonan — Section 112 of the patent statute, which in earlier years was something of a backwater in patent law, has had a tumultuous quarter century beginning with the Federal Circuit decision in Regents of the University of California v. Eli Lilly & Co., which (in the view of many) heightened the…
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By Kevin E. Noonan — There has been, since the turn of the century, a steady, seemingly inexorable trend towards limiting patent rights and focusing the application of U.S. patent law towards an emphasis on preventing innovators from obtaining patent rights broader than the minimum to which they may be entitled. This focus puts putative…
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By Kevin E. Noonan – It is not surprising that the Federal Circuit has taken the opportunity to apply the Supreme Court's recent precedent in Amgen v. Sanofi regarding the sufficiency of disclosure needed to satisfy the statutory enablement requirement under 35 US.C. § 112(a). After all, the decision is a rare affirmance of Federal Circuit…
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By Kevin E. Noonan – The Supreme Court handed down its decision in Amgen v. Sanofi today, affirming the Federal Circuit's decision below in a unanimous opinion by Justice Gorsuch. The opinion relies heavily on its own precedent that was heavily cited by both parties in their briefs and arguments, including O'Reilly v. Morse, 15 How. 62, The…
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By Kevin E. Noonan – The Supreme Court's consideration of the standards for satisfying the enablement provisions of 35 U.S.C. § 112(a) has been occasioned for the first time in over a century by the Court's granting certiorari in Amgen v. Sanofi. This has not surprisingly generated a great deal of interest and amicus briefing. While…
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By Kevin E. Noonan – The Supreme Court's consideration of the standards for satisfying the enablement provisions of 35 U.S.C. § 112(a) has been occasioned for the first time in over a century by the Court's granting certiorari in Amgen v. Sanofi. This has not surprisingly generated a great deal of interest and amicus briefing. While…
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By Kevin E. Noonan – The Supreme Court's consideration of the standards for satisfying the enablement provisions of 35 U.S.C. 112(a) has been occasioned for the first time in over a century by the Court's granting certiorari in Amgen v. Sanofi. This has not surprisingly generated a great deal of interest and amicus briefing. While some…
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