With a tidal wave of proposed regulations implementing the AIA poised to hit IP practitioners – ready or not – it seemed worthwhile to point out a new “Blawg” recently launched to help keep our heads above the murky legal waters to come. My firm, Schwegman Lundberg & Woessner, in cooperation with the IP group of the general practice firm Leonard Street and Deinhard, has opened a website, Patent RE-forum – Perspectives on the America Invents Act at http://www.americainventsact.com/. This blog blends the patent prosecution expertise of SLW with the experience of the IP litigation team at Leonard Street, and has already posted a series of short essays on most of the sections of the AIA: “Breaking Down the AIA.” Members of the William Mitchell College of Law IP Institute have also been invited to contribute posts.
Since Patents4Life does not intend to follow the new regulations closely, except as they will affect life sciences/biotech practice, the site should be a good supplement to my musings. For example, on January 6, 2012, the USPTO published 21 pages of proposed regulations in 77 Fed. Reg. at 982 “simply” to implement the changed requirements for an inventor’s oath and declaration in various applications. There is an entire column on the changes in the oath and declaration requirements in a continuing reissue application (!) I tried to skim the changes but quickly got bogged down. The most useful nugget I unearthed is that the assignee can execute the oath and declaration on behalf of a deceased inventor. Emotional issues aside, this can be a big help to facilitate continued prosecution in situations in which the inventor’s estate has been closed and the personal representative does not want to reopen it in order to sign for the inventor. Oh, and after September 16, 2012, the assignee(s) can sign the reissue oath and declaration for a broadening reissue application IF the assignee(s) applied for the original patent. Don’t get me started!
Finally, I am pleased to note that both Patents4Life and Patent RE-forum were recently picked as members of the top 25 Minnesota Blawgs in a survey sponsored by the Minnesota State Bar Association. Not a bad 3rd birthday present for Patents4Life!
Today, in Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk, in an opinion authored by Justice Kagan (a copy can be found at the end of this post), the Court reversed the Fed. Cir.’s divided 2010 decision that an ANDA filer (a “generic drug company”) sued in para. IV litigation cannot assert a counterclaim that the NDA holder (“the innovator”) listed a use code in the FDA Orange Book that is overly broad. This question is important because during litigation, Novo had broadened its use code to cover uses Caraco alleged were not within the claims of the listed patents, but which Caraco wanted to be able to include in its labeling. So the question presented was:
