The USPTO published guidelines for ascertaining compliance with the enablement requirement under 35 U.S.C. § 112 (a) during prosecution in view of the May 2023 U.S. Supreme Court decision in Amgen Inc. et al. v. Sanofi et al. The enablement
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Safe Harbor Protection: Acadia Pharms., Inc. v. Aurobindo Pharma Ltd.
In Acadia Pharms., Inc. v. Aurobindo Pharma Ltd., No. 20-985-GBW (D. Del. Dec. 2023), the district court granted Acadia’s motion for summary judgment of no invalidity for obviousness-type double patenting. The asserted patent was not a proper obviousness-type double patenting…
Ninth Circuit Pours Jack Daniel's in “Punchbowl” Trademark Suit
For many years, courts often applied the quintessential likelihood-of-confusion test for trademark infringement claims more narrowly when analyzing allegedly infringing products that were also works of artistic expression. For such products, courts generally applied a threshold First Amendment test, as…
Prosecution Pointer 410
Use Patent Assignment Search to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching…
Update on Diagnostic Claiming
The subject matter eligibility hurdle continues to loom for drafters of diagnostic claims. The goal is to draft claims that will be construed under the line of the few cases with diagnostic claims that have survived a §101 challenge:Read
Parody Sneaker Afforded No First Amendment Protection Against Vans’ Trademark Infringement Claims
Courts typically analyze trademark infringement claims under the Lanham Act’s likelihood of confusion test. This traditional test, however, is applied more narrowly when an allegedly infringing product is a work of artistic expression. In those cases, courts apply heightened scrutiny…
Prosecution Pointer 409
On February 5, 2024, the USPTO will retire the Electronic Patent Assignment System (EPAS) and the Electronic Trademark Assignment System (ETAS). The new Assignment Center will fully replace EPAS and ETAS for processing all patent and trademark reassignment requests. The…
Generating Litigation: N.D. Cal. Dismisses Some Copyright Claims in Andersen and Kadrey AI Cases
The groundswell of lawsuits filed against generative artificial intelligence (GenAI) companies based on various theories of copyright infringement shows no sign of abating. Readers following this issue will be aware, for example, of the claims filed by the New York…
Prosecution Pointer 408
Use Patent Assignment Search to search the database of all recorded Patent Assignment information from 1980 to the present (Patent Assignments recorded prior to 1980 are maintained at the National Archives and Records Administration). You may email questions about searching…
Prosecution Pointer 407
If a maintenance fee on a US patent has not been paid in a timely manner and the owner of the patent wants to get the patent rights reinstated, a petition and proper fees are required. A petition to reinstate…