On Tuesday, the Fed. Cir. affirmed a finding by the Board that Pfizer was entitled to an earlier priority date for a claim to cDNA encoding the IL-13 receptor protein (Sanofi-Aventis v. Pfizer, Inc., App. No. 2012-1345 (Fed. Cir. November 5, 2013). (A copy can be found at the end of this post.) Pfizer was the junior party in a pre-AIA interference, and was required to show conception plus reduction to practice prior to Sanofi’s filing date. While both applications demonstrated physical possession of the sequent and, in fact, contained the correct sequence, Pfizer argued that it was entitled to an earlier date of invention based on its actual possession of the cDNA combined with a sequence “only” containing eight errors in an 1135 nucleotide sequence.
Posts Tagged ‘intellectual property’
I am not sure how I missed this decision, which came down on July 22nd, but it offers a rather scary hi-def picture as to where the written description requirement of s. 112 has been and where it is headed. This decision, Novozymes A/S v. Dupont Nutrition Biosciences, Appeal No. 2012-1433 (Fed. Cir., July 22, 2013) (copy available at end of this post) rendered by a split panel (Judges Schall and Bryson, with Rader dissenting), affirmed a district court’s JMOL ruling nullifying a jury verdict that the claims of Novozymes’ U.S. Patent No. 7,717,723 (a copy found at the end of this post) met the written description requirement.
I recently received a well-written post from Smart & Biggar/Feherstonhaugh in Toronto reminding me that a publication by the inventor only shields a later third-party publication from being a bar if the second publication was derived from the inventor and a Canadian application – not a U.S. application—is filed by the inventor within a year of the inventor’s publication. This is not the same as the AIA provisions that allow a publication by the first inventor to avoid the prior art effect of a second publication of the invention, made by a third-party, so long as the first inventor files anywhere within a year of his/her publication.
You can find the entire post here.
This is a guest post from Mewburn Ellis of London.
The Administrative Council (the governing body of the European Patent Office) has decided at its meeting on 16 October 2013 to change the regulations regarding the deadline for filing divisional applications, specifically, to abolish the current deadlines.
From 1 April 2014, it will once again be possible to file a divisional application right up to the day before grant of the parent application. We understand that the new rule will apply to all applications that are pending on or after 1 April 2014, even if a deadline for filing divisional applications under the current regulations had already been set or indeed had passed. Thus, for many applications, the “window” for filing divisional applications will re-open.
There will also be an additional filing fee for second and subsequent generation divisional applications (i.e. divisionals of an application that is already a divisional application).
The EPO official announcement can be found here. We will provide further information as it becomes available.