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John is an Associate in Mintz Levin's Boston office. He has more than 20 years of experience working as a medicinal and synthetic organic chemist in the pharmaceutical industry, and focuses his practice on patent prosecution as well as Inter Partes Review proceedings before the US Patent Trial and Appeal Board.

We can take two valuable lessons from a recent decision of the Federal Circuit:

  1. Review all check boxes on forms when filing a U.S. patent application; and
  2. The United States Patent and Trademark Office is not to blame for deadlines falling on federal holidays.

On February 6, 2018, in Actelion v. Matal, the Federal Circuit affirmed the decision of the district court granting summary judgment in favor of the United States Patent and Trademark Office (PTO).  The dispute centered on the 40-day “A delay” patent term adjustment (PTA) awarded by the PTO to Actelion for U.S. Patent 8,658,675 (“the ‘675 patent”), entitled “Pyridin-4-yl Derivatives.”  Actelion asserted that it was entitled to 45 days of PTA, or alternatively, at least 41 days.

Continue Reading Patent Term Adjustment: Lessons Learned from the Federal Circuit Decision in <i>Actelion v. Matal</i>

In patent prosecution, the feedback loop between interested parties including patent prosecutors, inventors, and in-house counsel helps to provide the best patent applications and office action responses for a high quality issued patent. However, this work product represents only half of the overall patent prosecution effort, since the patent prosecutor works with a patent examiner sitting on the other side at the U.S. Patent and Trademark Office (USPTO). Given that, have you ever wondered how a patent examiner’s work product is reviewed to help improve patent quality? In its most recent Patent Quality Chat on November 14, 2017, a panel of USPTO quality experts provided insight on this topic in a presentation entitled “How is an Examiner’s Work Product Reviewed?”, highlights of which are provided in this article. The USPTO has provided the presentation slides and webinar video at their website.

Continue Reading Patent Quality Chat: How Is A USPTO Examiner’s Work Product Reviewed?