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Practitioners Beware: Hidden MPEP Rule Change May Cause Significant Impacts to After Final Practice

By Blog Staff

With the most recent revision to the Manual of Patent Examining Procedure (MPEP) in June 2020, practitioners have noticed a subtle, but potentially significant modification to one of the MPEP sections. The relevant section pertains to a change to the first-action final rejection (FAFR) practice under 706.07(b), ultimately broadening the criteria to issue a FAFR […]

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USPTO Director Andrei Lancu Takes a Look at Early Prosecution

This week, the USPTO Director, Andrei Iancu, testified before the House Judiciary Committee. In his written statement Director Iancu wrote on topics related to early prosecution that would result in lower costs to clients and would speed up the process of obtaining a patent. A new pilot program that will allow for a pre-search Examiner […]

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Developments up to second-filed application relevant to show no double patenting

The Federal Circuit has clarified the relevant timeframe for purposes of determining whether two claimed inventions are patentably distinct or would result in impermissible double patenting. The court held "the relevant time frame for determining whether a product and process are 'patentably distinct' should be at the filing date of the secondary application." Here, the […]

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When compounds in a class have divergent properties, positional isomer not obvious

In a decision Wednesday, the Federal Circuit affirmed a district court's determination that the asserted claims in a pharmaceutical patent were not proven obvious. As is common in pharmaceutical cases, the defendant filed an ANDA asserting the patent covering the compound and its use was invalid, and in the ensuing infringement suit admitted its proposed […]

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Federal Circuit invalidates Patent on Nobel-Prize winning invention after 50 years of prosecution

In an appeal from the Board of Patent Appeals and Interferences, the Federal Circuit affirmed the Board's rejection of the claims based upon obviousness-type double patenting over previously-granted related patents. The technical aspects of the invention are complex, but are overshadowed by the procedural aspects of this reexamination. The majority and dissenting opinions seem to […]

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BPAI: when prior art teaches away, expectation of success cannot support obviousness rejection

In a recent precedential decision by the Board of Patent Appeals and Interferences, the board reversed an Examiner's rejections based on double patenting, anticipation, and obviousness. The Board held the Examiner inappropriately rejected the claims for double patenting because there was insufficient evidence to show the compositions claimed in the prior art possessed the viscosity […]

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Invalidity affirmed on double patenting grounds; inequitable conduct finding vacated

In the second of two rulings yesterday, the Federal Circuit found the patent on Toprol-XL® (a drug used to treat hypertension, angina, and congestive heart failure) invalid based on obviousness-type double patenting, affirming summary judgment on the issue. The court vacated and remanded the grant of summary judgment of unenforceability due to inequitable conduct, as […]

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