We are pleased to be attending the International Association for the Protection of Intellectual Property (AIPPI) World Congress, which will be held in Cancun.
We are pleased to be attending the BIO International Convention, held June 4-7 in Boston, MA.
We are very pleased to announce that we recently received two category awards in the ACQ Law Awards 2016 presented by ACQ5, a premier global corporate magazine, winning in the categories of US (DC) Biotech and Pharmaceutical Patents Law Firm of the Year and US (DC) Leading Customer Service Law Firm of the Year.
Information about our firm appears on page 41 of the electronic publication.
About ACQ Law Awards 2016
Since 2008, the ACQ Law Awards have been celebrating achievement, innovation and brilliance in their annual awards. ACQ operates a legitimately independent nomination process. Importantly, our award winners are chosen by our readership.
Every year, we seek their assistance in recognising industry leaders, eminent individuals, exemplary teams and distinguished firms, which we believe represent the benchmark of achievement and best practice in a variety of fields – and every year, we turn to our readers to help as we strive to recognise an ever-widening spectrum of services, markets, industries and organisations that the sector serves.
ACQ Law Awards’ Objective: To gather quantitative and qualitative information from and about the legal sector to be able to give a set of “Best of” awards. We founded the ACQ Law Awards program to empower end users to make smarter, more confident legal decisions.
“Exceptional individuals, teams and firms across the marketplace represent the very best in their field from around the world and truly deserve the accolade of being an ACQ Law Award winner.” said Jake Robson, Editor in Chief of ACQ.
Voting closed on Monday 30th November 2015. The total number of nominations received stood at an amazing 28,641 representing a 22.4% response rate. (Our highest ever for our Law Award program). In judging these awards we have studied the nominations made by our voters and recognise that all of those nominated are leaders in their fields but the exceptional performances of some deserve recognition.
We are very pleased to announce that we have been named a recipient of a legal award from Acquisition International, a media company that focuses on corporate finance, winning in the category of Sustained Excellence in Biotech and Pharmaceutical Patents – USA for 2015.
Information about our firm appears on pages 14 and 15 of the publication:
About Acquisition International Legal Awards
Since 2010, Acquisition International Magazine’s annual awards have been highlighting the amazing work done by those firms and individuals whose ceaseless dedication to innovation, customer care and the continued growth and improvement of their businesses has seen them forge ahead of their competitors and raise the bar for performance and results in their industry.
We pride ourselves – and rightly so – on the validity of our awards and winners, an approach that is reflected in the rigorous and tightly monitored nomination, judging and selection processes. Every one of our awards is given solely on merit, meaning that there are no commercial requirements, no awards guaranteed by payment and no barriers to entry. In other words, no matter how big or small the business and regardless of where it is based, the only factors that will determine success are the work that is done and the results achieved.
Each and every nomination is subject to a lengthy and in-depth assessment process, designed to enable us to separate the truly remarkable from their peers.
The process begins the second we open the ballot boxes and distribute the voting forms to our worldwide network of partners and industry experts and sees us combine the votes received – alongside submitted supporting evidence, our own in-house research and the in-depth knowledge and expertise of our network of corporate leaders and experts to arrive at our final winners list.
This comprehensive selection and judging process ensures that our awards are always a true representation of the market in question and that all of our winners are truly at the cutting edge of their respective industries.
In Novartis vs. Lee, the Federal Circuit sided with the USPTO, in part, when it held that an applicant is not entitled to patent term adjustment for any time accrued during continued examination, even if the RCE was filed more than three years after the application date. Notably, the court held that:
The better reading of the language is that the patent term adjustment time should be calculated by determining the length of the time between application and patent issuance, then subtracting any continued examination time (and other time identified in (i), (ii), and (iii) of (b)(1)(B)) and determining the extent to which the result exceeds three years. Such a reading ensures that applicants recover for any “delay[s] due to the failure of the [PTO],” without allowing the applicant to recover for “any time consumed by continued examination,” as the statute requires. Id. § 154(b)(1)(B)(i).
This ruling finally puts to rest the open question as to whether RCE cutoff of the accrual B-delay should only apply if the RCE is filed prior to the three-year mark.
What is the take away? In a nutshell, if possible, avoid filing an RCE during prosecution. In addition to being placed on the “slow-pile” where prosecution may be delayed for more than a year, filing an RCE may cost you patent term adjustment. An RCE may be avoided by implementing certain housekeeping habits during prosecutions, such as (1) planning ahead and introducing claim amendments prior to issuance of a final Office Action, (2) conducting Examiner interviews early in prosecution to get the application in condition for allowance, etc. For example, consider conducting an Examiner interview after issuance of the first Office Action if it is apparent that the Examiner does not understand the invention. More times than not, a brief telephonic interview will move the application closer to allowance than a well-crafted 20-page response.
An alternative to an RCE is the USPTO’s After-Final Consideration Program 2.0. Under this Pilot Program 2.0, each applicant must request that the after final response should be considered, which may be done using form PTO/SB/434.
The form requires that the applicant agree to an interview if the Examiner decides it is necessary. The only other requirement is that at least one independent claim needs to be amended and not in a manner that broadens the scope of the claim. There are no additional fees. The USPTO recently extended this pilot program to September 30, 2014. You can find more information here: http://www.uspto.gov/patents/init_events/afcp.jsp.
Next steps? Review your patent portfolio to see if any patents issued within the past 180 days (where an RCE was used during prosecution) are eligible for a recalculation. The PTA can be corrected via a request for reconsideration under 37 C.F.R. 1.705(d) within two months after issuance (if you need sample, let me know). For patents issued more than two months, litigation appears to be the only option.
By Keisha Hylton-Rodic, Ph.D., J.D.
Dr. Hylton-Rodic is an Of Counsel in the firm. She specializes in assisting pharmaceutical and chemical companies with protecting their inventions in the U.S. and globally; and assessing risk when making key business decisions such as developing/launching products, licensing technology; and acquiring technology and other companies.
The opinions expressed are those of the author and do not necessarily reflect the views of the firm or its clients, or any of its or their respective affiliates. This article is for general information purposes and is not intended to be and should not be taken as legal advice.
Recent articles, interviews or news items involving the firm or its attorneys include:
Our firm will be attending the Biotechnology Industry Association (BIO) conference in San Diego, June, 2014.
Keisha Hylton-Rodic, Ph.D. will be moderating an American Bar Association webinar entitled “The Nuts and Bolts of Patents and the Drug Approval Process,” November, 2013.
Our firm is pleased to exhibit at the American Chemical Society national meeting in Indianapolis, September, 2013.
Our firm hosts a delegation of Senior Examiners from the European Patent Office for an educational event entitled “A Conversation with EPO Examiners,” May, 2013.
“Lawyers Offer Predictions for Myriad, Diagnostic Field Based on Supreme Court’s Decision Against Prometheus ”
Genetic Engineering & Biotechnology News
Academic & Pharma Partnerships: Tapping the Ivory Tower for the Next Blockbuster, FiercePharma
“Caveats in Patent Overhaul Could Pose New Challenges for Smaller Biopharmas”
Genetic Engineering & Biotechnology News
“Implementation of European Court Decision to Ban hESC Patents Depends on National Patent Offices”
Genetic Engineering & Biotechnology News
“Asia’s Emerging Markets Catching Up to the U.S. and Europe in Terms of Innovation”Genetic Engineering & Biotechnology News, June 2011
IP Man III, Legal Bisnow (New York) (profiling Sullivan’s IP Law Outline)
IP Lawyers Don’t Need Desks, Legal Bisnow (Washington, D.C.) (profiling Sullivan’s IP Law Outline)