Statute
35 U.S.C. 112
113 published works
RF EMerge
The Evolving Law of Enablement: Federal Circuit Decisions in Wyeth and Teva Form a “Yin and Yang” Framework
By Aydin H. Harston, Anh-Thu Lam
Two Federal Circuit decisions, three months apart, analyzed enablement of similarly broad method-of-treatment claims, but reached opposite outcomes. In April, the court reversed a JMOL of invalidity and reinstated a…
PTAB Litigation Blog
Federal Circuit Clarifies Prior Art Effective Date Relative To Provisional
By Charles Kim
Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Charles Kim and Anuja Mehta – The Federal Circuit recently issued a precedential decision in Dental Monitoring SAS v. Align Technology,…
Protecting the Product
Another Step Forward: Further Updates on In re Maatita and Design Definiteness
By Nick Schmidbauer, Justin DeAngelis
As we wrote about recently here, Examiners continue to rely on the USPTO’s current guidance on the definiteness standard set forth by the Court of Appeals for the Federal Circuit (“Federal…
Harness Dickey Blog
Enablement, Anticipation, and Claim Strategy: Rethinking Biotech Patent Drafting Post-Agilent
For anticipation under 35 U.S.C. § 102, a prior art reference must disclose each and every element of the claimed invention, and such disclosure must be enabling. The recent Federal…
Harness Dickey Blog
A Path to Antibody Protection
In the wake of the 2023 Supreme Court’s decision in Amgen, Inc. v Sanofi, the remaining means by which patent practitioners can claim antibodies while satisfying the requirements of 35…
Intellectual Property Law Blog
Federal Circuit Highlights the Importance of Separating Claim Construction and Infringement Analysis When Dealing with After-Arising Technology
By Brandon Buck
Novartis Pharmaceuticals Corporation v. Torrent Pharma Inc., No. 23-2218 (Fed. Cir. 2025) — On January 10, 2025, the Federal Circuit reversed the district court’s opinion that claims of a Novartis…
Biosimilars Law Bulletin
Federal Circuit Reverses Decision Finding Lack of Written Description for Patent Claiming a Pharmaceutical Composition Comprising the Two Active Ingredients in Entresto®
By Adam Nicolais, Jennifer P. Nock
The Federal Circuit recently reversed a District of Delaware decision that invalidated claims of Novartis’s Orange Book listed patent, U.S. Patent No. 8,101,659 (the “’659 patent”), for its blockbuster drug…
ANDVA Advisor Blog
Written Description Requirement for Negative Claim Limitations in Flux as Federal Circuit Panel Reverses Previous Panel Decision
Section 112 written description requirements present a challenge for patentees claiming negative limitations, as the extent to which a specification needs to disclose the absence of a feature is not…
Intellectual Property Law Blog
Federal Circuit Finds that a Narrowing Claim Limitation that Expressly Requires Optional Elements of a Markush Group from the Same Claim is Neither Contradictory Nor Indefinite
In Maxell, Ltd. v. Amperex Technology Limited, 2023-1194 (Fed. Cir. Mar. 6, 2024), the Federal Circuit reaffirms that a patent claim that includes narrowing limitations requiring only some elements of…
Protecting the Product
Maatita – Less can be More
Is it possible that adding more specificity and detail to a design claim can render the claim indefinite and non-enabled under 35 U.S.C. 112? According to the USPTO, the answer…