Patent Law Practice Center

USPTO Proposes Changes to Patent Term Adjustment in Response to Novartis

Recently, the United States Patent and Trademark Office proposed changes to the rules of practice pertaining to the patent term adjustment provisions in view of the decision by the United States Court of Appeals for the Federal Circuit in Novartis AG v. Lee.

Novartis filed law suits that challenged the determinations by the USPTO of how much time to add to the patent term under 35 U.S.C. § 154(b) with respect to 18 different patents. The district court dismissed 15 of the claims as untimely asserted, and the Federal Circuit affirmed that ruling. With respect to the substantive ruling on the other three patents (U.S. Patent Nos. 7,807,155; 7,968,518; and 7,973,031), the Federal Circuit in a panel decision by Judge Taranto (joined by Judges Newman and Dyk) concluded that the USPTO was partly correct and partly incorrect in its interpretation of § 154(b)(1)(B).  As a result, the Federal Circuit determined that Novartis was entitled to most, but not all, of the patent term adjustment it seeks.

(more…)

Patent Docs: USPTO Proposed Rule Changes

We are pleased to share the latest from our friends at PatentDocs.org, the Biotech and Pharma Patent Law and News Blog. The authors, Donald Zuhn and Kevin Noonan, are partners at McDonnell Boehnen Hulbert & Berghoff, LLP, and contribute to Patent Docs on a daily basis. Today’s post comes from a collection of articles on Patent Docs covering the different proposed rule changes announced by the USPTO: preissuance submissions provision, statute of limitations provisions for office disciplinary proceedings, and oath or declaration provisions. (more…)