Posts in IPWatchdog Articles

Building High-Quality Patent Portfolios in the United States and Europe: Part III – Examiner Interviews

In Part I of this series we discussed how patent portfolio managers should be careful when generating company-owned prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can be significantly hamstrung based on how the United States and Europe consider intervening prior art. In Part II, we examined software patents with U.S. and European Patent (EP) family members. Part III builds on Parts I and II and focuses on the value of examiner interviews in the U.S. and Europe.

A New Patent Frontier: the Coming of Age of siRNA Therapeutics

Small interfering RNA (siRNA) therapeutics have shown tremendous promise in targeting diseases with poor prognoses, transforming the pharmaceutical landscape. They have allowed a paradigm shift from a conventional inhibitor-based approach to RNA-induced targeted gene silencing. Rational siRNA design and delivery methods have significantly improved their stability, limited immune activation, and increased target affinity resulting in an influx of siRNA-based clinical trials. The U.S. Food and Drug Administration (FDA) has since approved three therapeutic siRNA drugs, ONPATTRO® (patisiran), GIVLAARI® (givosiran), and OXLUMO® (lumasiran) developed and marketed by Alnylam® Pharmaceuticals. In addition, several other drugs are in the late stages of clinical trials.

IPWatchdog LIVE Launches with Judge Albright; First Ever Paul Michel Award Goes to Kappos

Day one of IPWatchdog LIVE 2021 in Dallas, Texas, kicked off on Sunday, September 12, with a fireside chat between David Henry of sponsor Gray Reed and Judge Alan Albright of the United States’ most high-profile district patent court; panels on patent monetization and the Patent Trial and Appeal Board (PTAB) post-Arthrex; and IPWatchdog’s first ever Paul Michel Award, which went to David Kappos of Cravath Swaine & Moore.

Tillis and Leahy Urge USPTO to Address Inconsistent Prior Art Statements by Patent Applicants at the FDA

On Thursday, September 9, Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT) sent a letter addressed to Drew Hirshfeld, performing the functions and duties of the Director of the U.S. Patent and Trademark Office (USPTO), discussing the issue of inconsistent statements made by patent applicants pursuant to their disclosure requirements at the USPTO and other federal agencies, especially the U.S. Food and Drug Administration (FDA). The Senators are asking the USPTO to take swift action to ensure that applicants are disclosing all known prior art at both the USPTO and the FDA.

Report: Almost One-Third of IPR Proceedings are Settled

Our recent IPR Intelligence report covers the inter partes review (IPR) filing activity at the Patent Trial and Appeal Board (PTAB) from July 1, 2016, through June 30, 2021. Over the period of our study (July 1, 2016, through June 30, 2021) a total of 7,582 IPR petitions were filed, which shows a 1.6% decline compared to the five-year period we covered in our fourth annual report last year (July 1, 2015, through June 30, 2020). Nine-hundred and thirty law firms have represented patent owners and petitioners, while 5,341 attorneys worked for these firms. In the last five years, 2,658 companies have been involved in one or more IPRs, out of which 1,275 were on the petitioner’s side and 1,630 were patent owners.

Other Barks & Bites for Friday, September 10: HHS Secretary Proposes USPTO and FDA Collaborate on Drug Patents, Judge Koh Nominated to the Ninth Circuit and Tillis and Leahy Pen Letter on Inconsistent Patent Applicant Disclosures

This week in Other Barks & Bites: Senators Thom Tillis and Patrick Leahy ask the USPTO’s Drew Hirshfeld what the agency will do to enforce patent disclosure requirements at other federal agencies on patent applicants; the Fifth Circuit affirms sovereign immunity for Texas A&M’s athletic department but nixes a qualified immunity defense for a media relations director involved in unauthorized online republication of a copyrighted book excerpt; Judge Lucy Koh is nominated by President Biden to serve on the Ninth Circuit; the European Court of Justice rules that the protected designation of origin covering French champagne may be enforced against a Spanish tapas bar operator using champagne in its name and logo if the use causes consumer confusion; the Ninth Circuit reiterates that de minimis copying is not a defense to copyright infringement; increased scrutiny by Chinese regulators over restrictions to child online gaming sends shares of Tencent and NetEase down; and HHS Secretary Becerra outlines a proposal to reduce drug prices that includes plans to have the FDA and USPTO collaborate on efforts to eliminate drug companies’ ability to artificially extend market exclusivity after patent expiry.