Tag Archives: patent law

Solicitor General Recommends that Supreme Court Accept Review of Case Involving Extraterritorial Reach of U.S. Trademark Law

Photo of Andrew SamuelsBy Andrew Samuels on Posted in Trademark
In a May 2022 post, we noted that the Supreme Court called for the views of the Solicitor General on whether to accept review of Abitron Austria GmbH v. Hetronic International, Inc., a case involving the international reach of U.S. trademark law. The issue is whether a U.S. trademark owner can recover damages for infringing … Continue Reading

Characterization of Claim Elements as “Conventional” Results in Section 101 Subject Matter Ineligibility

Photo of Ron KernBy Ron Kern on Posted in Patents
In an attempt to broaden a patent’s disclosure and provide Section 112 support for features that are not explicitly disclosed within the patent’s specification (such as reagents, assays, techniques, etc.), patent applications are often drafted with boilerplate language to indicate that other “conventional,” “well-known” or “routine” features may be used. But acknowledging that features of … Continue Reading

New Combined Petition Option for the Expanded Collaborative Search Pilot Program – Is It Worth Implementing Into Your International Patent Portfolio Strategy?

Photo of Tayan PatelBy Tayan Patel on Posted in USPTO
Effective March 29, 2022, the United States Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) will accept a new combined petition option to participate in the Expanded Collaborative Search Pilot (CSP) program. The Expanded CSP program is currently active through Oct. 31, 2022, with each intellectual … Continue Reading

While CBD is Widely Available, Registering Marks for Ingestibles with CBD is Not

Photo of Robert HorowitzBy Robert Horowitz on Posted in Trademark
In two recent decisions, the Trademark Trial and Appeal Board (TTAB) made it abundantly clear that attempting to register a mark for ingestibles containing cannabidiol (CBD) likely will be an exercise in futility. In In re Harbor Hemp Company LLC, SNs 88377702 and 88377730 (TTAB Jan. 27, 2022) [not precedential] and In re AgrotecHemp Corp., … Continue Reading

Justice Ginsburg’s Dissents – in Patent Law

Photo of Jason HoffmanBy Jason Hoffman on Posted in Patent
As the country collectively mourns the passing of Justice Ruth Bader Ginsburg, I am reminded of the inspiring book “I Dissent: Ruth Bader Ginsburg Makes Her Mark” (which I have read to my children many times). While the justice was famous for her dissents on other issues, what about in patent law? From Markman v. … Continue Reading

Federal Circuit looks to provisional patent application in determining claim scope

Photo of Erin CaldwellBy Erin Caldwell on Posted in Patent
Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ Tech v. Ricoh.[1] In MPHJ Tech, the Federal Circuit affirmed an inter partes review decision in which the Patent and Trademark Appeal Board (PTAB) found claims of … Continue Reading

Pharmaceutical Life Cycle Management: Navigating the New IP, FDA and Antitrust Terrain

Photo of BakerHostetlerBy BakerHostetler on Posted in Uncategorized
Efforts to extend the life cycle of pharmaceutical products frequently involve innovations and improvements in product design, formulation, route of administration and treatment indications. In addition, negotiation of agreements with competitors, including generic and biosimilar manufacturers, is frequently employed as part of a life cycle management strategy. However, recent changes in patent, regulatory and antitrust … Continue Reading
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