Prosecution Luncheon Patent March 2017

Request for Examination Deadline in the United Kingdom (UK) Docket Items Request for Examination Deadline in the United Kingdom (UK) Previously- 33 months from the earliest priority date. Now- 6 months from publication date (like EPO) When priority based on a PCT application, the earlier PCT publication counts for this 6 month deadline, so you need to request examination upon filing the UK application.

Inter Partes Review (IPR) Appeal Standing Federal Circuit held that a petitioner (Phigenix in this case) lacked standing to appeal an adverse final written decision in an IPR. The petitioner/appellant was "not engaged in any activity that would give rise to a possible infringement suit." Phigenix, Inc. v. ImmunoGen, Inc. 2016-1544 (Fed. Cir. 2017) Is an IPR worth the risk now?

Obviousness- Motivation to Combine In re van Os Examiner PTAB- combination of references would have been “intuitive” (or common sense). “the flexibility afforded by KSR did not extinguish the factfinder’s obligation to provide reasoned analysis. Instead, KSR specifically instructs that when determining whether there would have been a motivation to combine, the ‘analysis should be made explicit.'” (page 4, 2015-1975, Fed. Cir. 2017) http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1975.Opinion.12-28-2016.1.PDF

Obviousness- Motivation to Combine In re van Os Absent some articulated rationale, a finding that a combination of prior art would have been “common sense” or “intuitive” is no different than merely stating the combination “would have been obvious.” Such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine. This type of finding, without more, tracks the ex post reasoning KSR warned of and fails to identify any actual reason why a skilled artisan would have combined the elements in the manner claimed. See 550 U.S. at 418, 421. (Page 5)

Prosecution Luncheon Patent March 2017