When is a Published Patent Application Deemed Prior Art in IPR?
The U.S. Court of Appeals for the Federal Circuit recently affirmed a Patent Trial and Appeal Board (PTAB) decision in Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., holding that a published patent application can qualify as prior art from its filing date. The Federal Circuit decision answered the previously unanswered question whether a published patent application should be considered prior art as of its filing date or, instead, its publication date in Inter Partes Review (IPR) proceedings.
Federal Circuit Elaborates on Obviousness Standard Under 35 U.S.C. § 103
In the United States, one of the reasons a patent claim may not be obvious over various prior art references is if one of those references "teaches away" from the modification or combination needed to arrive at the claim. The standard for what constitutes "teaching away" was addressed in a recent decision of the U.S. Court of Appeals for the Federal Circuit in an appeal from an inter partes review (IPR), which is a post-grant proceeding conducted by the Patent Trial and Appeal Board (PTAB) of the United Stated Patent and Trademark Office.
Enforcement of Intellectual Property Laws in the United Arab Emirates
The United Arab Emirates is a leading jurisdiction for protection of intellectual property rights and promoting the implementation of related laws. This has been demonstrated through the continuous updating and development of the legislative system in addition to preparing and developing law enforcement cadres and agencies in all emirates of the country to ensure the implementation of legislation and laws on the ground. Examples include Law No. 36 of 2021 regarding trademarks, which is considered one of the most important legal tools in protecting intellectual property rights within the country, Law No. 38 of 2021 regarding copyright and related rights, and Law No. 11 of 2021 regarding the regulation and protection of industrial property rights. In this article we will explain Trademark Law No. 36 of 2021 and the problems it addressed that were not addressed by the old Law No. 37 of 1992.
Medtronic Pays the Cost of PTAB's Continued Misunderstanding of 35 U.S.C. § 101
In software and life science technologies, many patent applicants eventually receive an office action rejecting their claimed invention as being directed to an abstract idea, natural law, or another judicial exception. This infamous rejection is typically referred to as an Alice rejection or a § 101 rejection in view of the relevant Supreme Court case and U.S. statute. In attempting to overcome such § 101 rejections, many patent applicants have complained that the USPTO's subject matter eligibility (SME) test is applied inconsistently among different organizations at the USPTO, even amongst different examiners in the same technology art unit. A recent patent application filed by medical device company, Medtronic, provides a clear illustration of the confusion in applying the USPTO's SME test.
A Reminder that Written Description and Enablement also Require a Look Back in Time
Analyzing patent validity requires consideration of the circumstances at the time of the patent's filing. For example, when deciding whether patent claims are invalid as anticipated or obvious, one must look at the available prior art and knowledge of a person of ordinary skill in the art available at the time of the patent's earliest effective filing date. The recent decision In re ENTRESTO is a reminder that this timing perspective also applies to written description and enablement analyses.
CAFC Rules Cytiva's Claims Unpatentable under 35 U.S.C. § 103: Inherent Properties in an Otherwise Obvious Claim
The interplay between the legal doctrines of inherency and obviousness was recently considered by the U.S. Court of Appeals for the Federal Circuit (Federal Circuit or CAFC) in Cytiva BioProcess R&D AB vs. JSR Corp. In particular, the CAFC discussed that if a claimed property is considered inherent in an otherwise obvious claim, then there is no question of a reasonable expectation of success.
Lead Compound Analysis Not Required Where the Prior Art References Expressly Suggest the Proposed Modification
When assessing obviousness of a chemical compound, Federal Circuit caselaw generally follows a two-part inquiry referred to as the "lead compound" analysis. However, in Cytiva BioProcess R&D AB v. JSR Corp. , the U.S. Court of Appeals for the Federal Circuit ("Federal Circuit" or "CAFC") explained the flexibility in the use of lead compound analyses when determining patentability or validity of claimed chemical compounds under 35 U.S.C. § 103. While commonly used, the lead compound analysis is not, as a strict rule, always required. Rather, because the Supreme Court emphasized flexibility over rigid and formalistic rules in considering obviousness in KSR , such flexibility should also be applied to obviousness assessment of new chemical compounds.
Federal Circuit Applies Functionality Doctrine to Deny Registrability of a Color Trademark
The functionality doctrine in U.S. trademark law states that a functional mark is not registrable. The doctrine prevents the use of trademarks for impeding legitimate competition by ensuring that companies seek protection for utilitarian features through patents having limited terms, and not with trademarks which are renewable indefinitely. When a patent term expires, competitors are free to use the functional product features disclosed in the expired patent.
BREAKING NEWS
On December 3, 2024, the United States Patent and Trademark Office ("USPTO") formally withdrew its highly controversial proposal to add a new requirement for terminal disclaimers. Terminal disclaimers are often filed during prosecution of U.S. patents to overcome non-statutory double patenting rejections. The proposal, published in May of 2024, would have imposed a new practice under which a patent in which a disclaimer is filed would be enforceable only if no claim in a patent to which it is tied by the terminal disclaimer has been found invalid. The proposal was roundly criticized as onerous, unnecessary, and disruptive to well-established practice.
Claim Scope and Biological Deposits
The U.S. Patent Trial and Appeal Board (PTAB) recently issued a post-grant review decision, denying a post-grant review challenge to U.S. Patent No. 11,696,545 submitted by Inari Agriculture, Inc. against the patent owner Pioneer Hi-Bred International, Inc. The Board ruled that because the claims cited representative seeds deposited at the National Center for Marine Algae and Microbiota (NCMA), the claim scope encompasses both the plant variety's phenotype and genotype, even though the genotype is not explicitly recited in the claims. Thus, the post-grant review challenge was denied because the Board agreed with Patent Owner's arguments that the claimed material was properly enabled by the specification and was also nonobvious. This decision raises more questions than it answers regarding claim construction.
