Federal Circuit Clarifies the Scope of On-Sale Bar and Holds that the Absence of Regulatory Approval Before the Critical Date does Not Prevent a Sale and the Completion of Phase III studies and Final FDA Approval are Not Pre-Requisites for the Invention to be Ready for Patenting

HELSINN HEALTHCARE S.A., v. TEVA PHARMS. USA, INC.: May 1, 2017. Before Dyk, Mayer, O’Malley. Takeaway: An agreement contracting the claimed invention for sale contingent on regulatory approval is still a commercial sale, and thus the absence of FDA or other regulatory approval before the critical date does not prevent …

When the Examiner Agrees With an Attorney’s Argument Presented in an Inter Partes Reexamination, But Cites to No Substantial Evidence, There is no Factual Basis for the Examiner’s Finding That Patent Claims are Unpatentable as Being

Icon Health v. Strava, (2016-1475) February 27, 2017.  Before Judges O’Malley (concurring-in part and dissenting-in-part), Reyna, and Wallach. Takeaway: In order to withstand a challenge on appeal, a determination by the PTAB that the claims of a patent would have been obvious must be supported by substantial evidence, and be …

Graphical User Interface Improvements Without Pre-Electronic Analog Found Patent Eligible

TRADING TECHS. INT’L, INC. v. CQG, INC.: Jan. 18, 2017. Before Newman, O’Malley, Wallach. Takeaway: A new application or computer-implemented function is patent eligible when it is not simply the use of a computer to conduct a known process, but rather improves the whole system’s capability. Procedural Posture: Judge Coleman …

The Mark DOTBLOG is Suggestive And Does Not Immediately Convey The Nature Of A Blog Searching Service

IN RE DRIVEN INNOVATIONS: Jan. 4, 2017. Before Lourie, Mayer, and O’Malley. (nonprecedential) Takeaway: A mark is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. Procedural Posture: Applicant appealed Board’s decision refusing to register proposed mark.  CAFC reversed. Synopsis: …

A Large List of Words Weights In Favor of Finding No Registrable Trademark

Authored by Rose Cordero Prey, Michael Block, Jean Dassie and Vaibhav Sharma IN RE: PREMA JYOTHI LIGHT: Oct. 7, 2016 (non-precedential). Before Lourie, Dyk and O’Malley. The Takeaway: Although there is no limit on the number of words that can make up a trademark, a large list of words weighs in …