Federal Circuit clarifies rules regarding patent term adjustment

By Joseph M. Hallman

Last month, in Sawstop Holding LLC v. Vidal, the Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed two decisions by the District Court of the Eastern District of Virginia regarding patent term adjustment (“PTA”) for two patents owned by Sawstop Holding LLC (“Sawstop”). In both decisions the District Court granted summary judgement in […]

Juggling your Patent Family to Keep Optimal Patent Life

You’ve filed a patent application that is to a broad, important aspect of your product, and also filed a continuing application to one version of that invention. The narrower second-filed application receives a notice of allowance. But before you pay the issue fee, it is worthwhile to consider whether this second narrower will impact the […]

Kimble v. Marvel-SCOTUS’s Refusal to Overturn Brulotte

Kimble v. Marvel-SCOTUS Declines to Overturn Brulotte

            Patent portfolios are often a substantial asset to business associations, and even for the individual inventor an issued patent or two can be Big Business. Patent assignments (i.e. wholesale buying and selling of patents and patent applications) are not the only ways to trade in the commodity. Many transactions take […]

Federal Circuit Clarifies Patent Term Adjustment

The U.S. Court of Appeals for the Federal Circuit has issued an opinion that provides guidance for how Patent Term Adjustments should be calculated. Between June 2009 and May 2011, Novartis filed four civil lawsuits against the Director of the United States Patent and Trademark Office (PTO) in the United States District Court for the […]

Contract Enforceability Beyond Patent Term

InKimble v. Marvel Enterprises, the plaintiff patent owner appealed the United States District Court for the District of Arizona's decision to not extend royalty payments beyond the life of a licensed patent. The United States Court of Appeals for the Ninth Circuit affirmed the lower court's decision. In December 1990, Kimble met with an officer […]

Denial of interim patent term extension affirmed

In a decision rereleased as precedential yesterday, the Federal Circuit affirmed a district court’s denial of a preliminary injunction seeking to compel the Director of the United States Patent and Trademark Office to grant a request for an interim patent term extension under 35 U.S.C. § 156(e)(2).Somerset Pharmaceuticals, Inc. ("Somerset") is the owner of a […]

Patent Term Extensions: A Leap Frog of Sorts to Set Expiration Date

In a case before the Federal Circuit, the court affirmed the district court's decision that a patent term extension under the Hatch-Waxman Act, 35 U.S.C. § 156, may be applied to a patent subject to a terminal disclaimer under 35 U.S.C. § 253. The Federal Circuit found that the language of § 156 is unambiguous […]