Meghan McLean Poon, Ph.D.

This proposal to tie enforceability of a child patent application to the novelty/non-obviousness validity of a parent issued patent would greatly shake up the value of using Terminal Disclaimers. In addition to my colleagues' many awesome recommendations (e.g., leaning to amend to distinguish, starting narrow in parent then broadening in child, etc.), I'd also recommend preemptive triggering of restriction requirements, to garner obviousness-type double patenting immunity. Will have to wait-and-see whether this proposal is ultimately adopted.

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Mike Hammer and Dr. Jing Liu, Ph.D. have been quoted in the Law360 article, “Why Dickinson Wright Launched IP-Focused San Diego Shop.” Both highlight the multiple areas of opportunity – including life sciences – which Dickinson Wright is tapping into by opening its San Diego office. Read the full article here: https://bit.ly/3NIwQnz #iplaw #biotechlaw #lifesciences

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In my experience, nothing good usually comes out of Congress when they decide to tinker with patent law. Yet, in a rare twist, the Patent Eligibility Restoration Act is right on the money. This bill aims to reverse the trend of overly broad judicial exclusions of subject matter from patent eligibility, restoring innovation's rightful place in our legal system. A recent article on Patently-O (see link below) notes the importance of this act and how it would counteract decisions like Mayo, Myriad, and Alice, which have unduly limited patent eligibility in the life sciences and tech sectors. As noted by the article, the Act represents "a broad expansion of patent eligibility—particularly for diagnostics, software, and natural products," potentially unlocking a new era of innovation. Unfortunately, the chance of it passing in this political climate is slim, making it feel like another missed opportunity for meaningful change in the IP space. #PatentLaw #USPatentLaw #PERA #USPatent #Patent #USPTO #USLegislation #TechLawyer

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Legal Ops peers - Discussion topic: CLOC vs ACC Legal Ops memberships- 👉 Do you have both? Or just one? 👍 What are the reasons for having both? 💰 Is it worth the cost to have both? I can't be the only curious mind wondering this, so let's dive in and share thoughts (and be kind please!)

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Our second panel of the day, discussing what is going on inside the beltway in DC. #policy #legislation #rulemaking #patent.

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Monica Chmiewlewski and Alex Maulden authored this recent Applied Clinical Trials article, “An Overview of FDA Diversity-Related Documents for Clinical Trials,” highlighting the key takeaways of several FDA diversity-related guidance documents. #FDA #LifeScience #ClinicalTrials

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This is an interesting case. Here, the Court found that minority shareholders did not have the ability to enforce trademark infringement when the majority shareholder's name was part of the trademark and he used the same name in other trademarks. IMHO, this feels like the right opinion based on IP Law. Investors should have tied up IP rights by preventing the majority owner from using his name for other ventures. What are your thoughts? #UStrademarklaw #trademarks #IP #IPRights #techlawyer https://lnkd.in/gVuvSmut

The United States Court of Appeals 5th Circuit just announced it will not adopt a proposed rule specifically requiring disclosure and other requirements for attorneys who use AI as part of their practice. Upon reflection, and based upon a lot of negative feedback on the proposed rule, they recognized that existing rules already cover the same situations. Specifically, attorneys are enforceably required to stand behind the truthfulness and accuracy of court filings. However, the court admonished litigants and lawyers alike that “I used AI” will not be an acceptable excuse for violating existing rules! Here is the formal notice from the court: https://lnkd.in/gJWyEyxg For color, here also are some recent news articles on this announcement: * Reuters: https://lnkd.in/gJmjWSqv * Bloomberg Law: https://lnkd.in/gaVqCkHi And, since I have it at hand, for your convenience, here is the full statement by the court: “The court, having considered the proposed rule, the accompanying comments, and the use of artificial intelligence in the legal practice, has decided not to adopt a special rule regarding the use of artificial intelligence in drafting briefs at this time. Parties and counsel are reminded of their duties regarding their filings before the court under Federal Rule of Appellate Procedure 6(b)(1)(B). Parties and counsel are responsible for ensuring that their filings with the court, including briefs, shall be carefully checked for truthfulness and accuracy as the rules already require. “I used AI” will not be an excuse for an otherwise sanctionable offense.” Personally, I think this court got it right. To the extent existing rules cover situations arising from use (or misuse) or AI, it is a good idea to apply those rules first before seeking to make more rules. In the event of demonstrable failures of existing rules, then perhaps it will be more practical to craft new rules to address the gaps that have been revealed. But it is, apparently, a very good idea to sound the alarm far and wide, loud and clear: sometimes generative AI provides incorrect or otherwise unsuitable information and it remains the duty of the attorney (among others) to carefully review and stand behind any work they pass forward. That concludes my public service announcement for today :-)

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⚖️📜 Sharing a case that discusses principles relating to interim injunctions in patent cases, validity of patents, and conduct of patent holders. The case relates to a patent over the diabetes drug, EMPAGLIFLOZIN. 🔓📄 You may share the case note under the Creative Commons Attribution 4.0 License. #Diabetes #Patents #Injunction #PatentValidity #IndianCase

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Sponsored genetic testing involves a third party, such as a biopharmaceutical company, covering the costs for a patient to undergo genetic testing. This Law360 article does a great job explaining why DOJ and OIG’s legal theories about sponsored genetic testing are incorrect. Sponsored genetic tests play a critical role in helping patients and families receive accurate and timely diagnoses of their rare disorders. They are not kickbacks. The federal government’s position will make diagnoses for these patients even harder and will discourage companies from sponsoring these important diagnostic tools in the first place. We have the tools to help these patients, and we must do better. Proper diagnosis is not a privilege; it is a right.   #DOJ, #Ultragenyx, #genetictesting

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Read our Goodwin regulatory blog on the now-issued, long-awaited Diversity Action Plans draft guidance from the FDA - the good news for industry is that the guidance remains draft in form and these requirements will only kick-in following issuance of final guidance from FDA on this topic. #goodwinlaw #lifesciences

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The Fed Circuit's recent Allergan ruling provides some much-needed assurance to owners of complex patent families -- but questions remain. In the article below, I share some thoughts on the Allergan and In re Cellect rulings and how they may affect patent portfolio management. #PatentLaw #FederalCircuit #USPTO

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The test for design patent claim obviousness changed. The en banc Fed. Cir. struck down the existing test and adopted a more "flexible" approach to conform to KSR. Now, obtaining a design patent will be more difficult, and invalidating an existing design claim will be easier. The Supreme Court has been happy to set the Fed. Cir. straight in recent history. I expect a petition for Cert. Will it be granted? "We conclude that the Rosen-Durling test requirements—that (1) the primary reference be “basically the same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other—are improperly rigid. The statutory rubric along with Supreme Court precedent including Whitman Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness." Any analogous art can now be applied under the now standard KSR/Graham test. https://lnkd.in/ePs47bZD #patents #designs

Are you a solo, do-it-all legal ops team? A lone ranger of all things legal ops? A legal ops party of one? Do you identify with "It's me, hi, I'm Legal Ops, it's me"? Are you interested in joining a community of other parties of one legal ops professionals to discuss the unique difficulties, situations and issues we face as parties of one? Comment below and I'll invite you to the Party of One Legal Ops (POLO) community here on LinkedIn. You'll be in GREAT company. (Shoutout to Hayley Day for taking a half-baked thought and making it a reality) #legalops #partyofone #partyofonelegalops #POLO #legalopscommunity

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My legal Anti-trust/Competition Law expert friends weigh in with your thoughts please. Common for a company to ask potential investors to not fund competitors - usually with a general description of competitive business activities (note - a company seeking funding will never get agreement to this request unless it is the rockstar start-up of the moment with VC's fighting for an allocation spot). However, I am not sure I have ever heard of a list of specific competitors being presented in writing like OpenAI allegedly has done. It doesn't seem like a bad ask from a company perspective if you have VC's banging at the door to be let into a funding round. This ensures that the VC fund won't be sharing any of your confidential info with a competitor (yes, I know they have confidentiality agreements, but practically it is a valid concern) and also has 100% focus on supporting your company. But I wonder if taking the step of putting a list of competitors in writing might have raised an anti-competition violation argument here? Section 2 of the Sherman Act is very broad: "Every person who shall monopolize, or attempt to monopolize, or combine or conspire with any other person or persons, to monopolize any part of the trade or commerce among the Several States… shall be guilty of a felony…" Being a monopoly is not bad or illegal in and of itself in the US. If a company achieves a monopoly because of superior products, services and/or first entrant model, that is fine. The Sherman Act Section 2 comes into play when that monopolist then tries to use "anti-competitive means" to obtain or maintain that monopoly position, commonly called "exclusionary conduct." There are lots of arguments that VC financing should be outside the gambit of competition law. Generally, exclusionary conduct examination has focused on activities with a monopoly's customers - exclusive contracts, predatory pricing, MFN's, refusals to deal - or working with some competitors (price fixing). Is anyone aware of a situation where requiring VC shareholders to pledge non-investment in competitors (either specifically named or by a general description of competitive business activities) was challenged as anti-competitive? I wonder also how non-US competition law would look at this conduct?

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