Peter Phillips’ Post

The USPTO has proposed changes to the rules governing terminal disclaimers to overcome nonstatutory double patenting concerns. In this #intellectualpropertylaw update Richard Mar and Diane Hwang look at what Canadian #patentowners with U.S. patents and patent applications in their portfolio should know: https://lnkd.in/g2BHYN3X

The USPTO has proposed changes to terminal disclaimer rules that could impact strategies of both patent applicants and patent challengers. Check out my post below for some insights on those potential changes. #USPTO #PatentLaw #LegalUpdates

A new development in the patent landscape: the U.S. Patent and Trademark Office just released guidance on improving the clarity and consistency of patent application evaluations. While the guidance is intended to standardize the application of the law of obviousness across various cases, the USPTO also acknowledged that, as with so many things, there’s no one-size-fits-all approach. https://bit.ly/3P2XxUY

The US Patent and Trademark Office (USPTO) recently proposed a new rule for filing terminal disclaimers to overcome obviousness-type double patenting rejections. If adopted, the rule will likely spur patent applicants to consider new strategies for pursuing continuation applications. Check out this informative LawFlash by my colleagues Hayley Reed, Victor P. Ghidu, Ph.D., and Michael Abernathy. #mllifesci #wearemorganlewis

The proposed rule changes to Terminal Disclaimers to overcome double patenting have not yet been finalized. If the U.S. Patent and Trademark Office (USPTO) decides to finalize these changes as the next step in its dreams of slaying the demons of high drug prices with a single blow by extorting concessions from patent applicants in terminal disclaimers, those finalized rules will be challenged. I have released an online version of a pre-print paper titled “How to Resolve Double Patenting,” which argues against the proposed rulemaking as being both ill-conceived and impermissible.

The United States Patent and Trademark Office (USPTO) announced withdrawal of a proposed rule regarding terminal disclaimers in the patent system. A terminal disclaimer is a legal statement filed in patent applications to address double patenting concerns when two patents owned by the same entity have overlapping claims. By filing it, the applicant agrees that the later patent will expire at the same time as the earlier one and acknowledges that both patents must be commonly owned for their entire term. This ensures that the applicant cannot unfairly extend their patent rights by obtaining multiple patents with similar claims. It is primarily used to maintain the integrity of the patent system and prevent monopolistic extensions. Terminal disclaimers are filed voluntarily by applicants to overcome patent rejections based on double patenting. The proposed rule, initially published on May 10, 2024, sought to add a new requirement to make these disclaimers more robust. However, after receiving public feedback, the USPTO decided not to proceed with the rule.

eBAY VS. EVERYONE: WHY CONGRESS WANTS TO REWRITE ONE OF THE RULES OF PATENT INFRINGEMENT There's a new bill making its way through Congress that could significantly impact patent law in the US. Called the RESTORE Patent Rights Act, it aims to make it easier for patent holders to stop others from using their inventions without permission. Why is this bill needed? In 2006, a Supreme Court decision made it much harder for patent holders to get injunctions (court orders that stop infringing activity). This meant that even if someone was found guilty of patent infringement, they might still be able to continue using the invention, often by just making a payment. What would the RESTORE Act do? This new bill would essentially reverse that Supreme Court decision. It would create a presumption that a patent holder is entitled to an injunction if they win their infringement case. In other words, infringers would be stopped from using the invention unless they could prove to the court that an injunction shouldn't be granted. Who supports this bill? Supporters of the bill, including former heads of the US Patent Office, argue that it's necessary to protect American innovation and ensure that inventors can properly enforce their patents. They believe the current system makes it too easy for companies to infringe patents and simply make a payment rather than licensing the technology. Who opposes this bill? Opponents worry that the bill would give too much power to patent holders, particularly those who don't actually manufacture anything themselves. They argue it could lead to inflated licensing fees and stifle competition. What's next? The RESTORE Patent Rights Act still has a long way to go before it becomes law. It needs to be passed by both the Senate and the House of Representatives and then signed by the President. While it's unclear whether it will ultimately succeed, it's definitely a development worth watching for anyone interested in patent law and innovation. #patentlaw #innovation #intellectualproperty #RESTOREact

📣The USPTO announced a final rule that significantly increases most existing fees and adds new categories of fees for continuations and IDS filings. 💸As someone who follows IP developments, I know how crucial it is to stay ahead of these changes. Time to plan and budget accordingly! 📖Check out our summary below!

A German court has ruled that LELO provided incorrect and misleading information in an ongoing patent dispute On September 9, 2024, in preliminary injunction proceedings, the District Court of Hildesheim ruled in favour of EIS, confirming that LELO had included incorrect and misleading statements in a press release about the status of the infringement proceedings against LELO products. As reported previously, on July 25, 2024, the Düsseldorf District Court ruled that the LELO’s products - Sona, Sila, and Enigma - violate the patents of EIS GmbH. As a result, LELO is required to cease distributing the infringing products within the court’s jurisdiction, provide EIS with information about all distributed products and their recipients, and pay damages for the distribution of patent-infringing products. Previously, on October 18, 2022, the European Patent Office had rejected the opposition filed by LELO Europe GmbH against EIS’s patent. LELO has appealed both the decision of the European Patent Office and the Düsseldorf District Court. Ignoring the status of the proceedings, in a press release LELO provided incorrect and misleading statements, including the following: “Importantly, the German court did not review the patent with regard to its validity; LELO will challenge the patent on these grounds shortly.” “Accordingly, LELO customers and clients outside of Germany will not be impacted by this ruling in any manner whatsoever.” In regard to the incorrect statements, firstly on October 18, 2022, the European Patent Office Opposition Division confirmed the validity of the patent EP ‘297 in question. Secondly, it is not unlikely that the courts in other jurisdictions will follow the German court ruling; LELO had not brought forward any counter-argument for this. LELO has the right to file an immediate appeal against the Hildesheim court’s preliminary injunction. EIS is encouraged by the recent decision of the Hildesheim court to offer former distributors of our competitor LELO, as well as other companies that will respect our patent rights, the opportunity to collaborate with us in promoting and distributing our Satisfyer products. #satisfyer #satisfyereffect #lovenextlevel