In Supernus Pharm., Inc. v. Lupin Ltd., C.A. No. 21-1293 (D. Del. April 5, 2023), the United States District Court for the District of Delaware construed two claim terms disputed by the parties. The court did not apply the prosecution
Prosecution First Blog
The Prosecution First Blog, published by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, focuses on developments and practical guidance related to patent prosecution before the United States Patent and Trademark Office (USPTO). It covers topics such as USPTO pilot programs, examination procedures, claim amendments, prior art searches, and procedural updates that impact patent applicants and practitioners. The blog provides updates on USPTO initiatives aimed at streamlining patent examination and offers pointers on compliance with USPTO filing and amendment requirements.
Latest from Prosecution First Blog - Page 9
Prosecution Pointer 386
By Publisher
A claim listing of all the claims ever presented is required when any amendment document includes a change to an existing claim, cancellation of an existing claim, or addition of a new claim.Read more
Prosecution Statements Rear Their Ugly Head
In Azurity Pharms., Inc. v. Alkem Labs. Ltd., 2023 U.S. Dist. LEXIS 77839 (D. Del. May 4, 2023), the district court held that Azurity failed to show that Alkem’s ANDA infringed the asserted claims.Read more
Prosecution Pointer 385
By Publisher
Under 37 C.F.R. § 41.31, an Applicant may appeal to the PTAB from a decision of an examiner when the claims have been twice rejected. If the claims have not been twice rejected, a notice of appeal would be premature…
Product-by-Process Claims Circumvent Petitioner’s Inherency Argument
In Restem, LLC v. Jadi Cell, LLC, IPR2021-01535, Paper 42 (P.T.A.B. April 18, 2023), the Patent Trial and Appeal Board (“Board”) issued a final written decision finding no challenged claims were shown to be unpatentable because the petitioner failed to demonstrate…
Intrinsic Evidence Decodes Disputed Claim Terms
By Publisher
In Newron Pharms. v. Aurobindo, No. 21-cv-843 (D. Del. April 14, 2023), the District Court of Delaware addressed several disputed terms in a patent related to the treatment of idiopathic Parkinson’s disease. Based on the intrinsic evidence, the Court agreed…
Prosecution Pointer 384
By Publisher
“A” Question: To Mean Only One, Or One Or More?
By Publisher
Choice of words can have a significant impact on conveying meaning. Patent drafting is no different. For example, the smallest word such as “a” can significantly change the scope of a construed claim. Patent practitioners must continue to ask, what…
Prosecution Pointer 383
By Publisher
The USPTO’s Office of Patent Legal Administration (OPLA) services range from the drafting of regulations and development of policies for the examination of patent applications through the implementation of these new regulations and practices. Rule packages, Official Gazette notices, collection…
Prosecution Pointer 382
By Publisher