Post Prosecution Pilot Program (P3): A Commendable Decision by USPTO

On Monday 11 July, USPTO announced a new pilot program (P3), intended to boost the prosecution efficiency. Under the P3 program, an applicant can file a request for consideration after final rejection, statement that he is willing and available to participate in the event, along with copy of response to a final rejection, and optionally proposed non-broadening amendment to the one or more claims. The program provides an opportunity to the applicant to make an oral prosecution to a panel of examiners, and then receive a written decision from the panel. Duration of the initiative: The P3 pilot is scheduled... Read More

Patent Cooperation Treaty National Phase Entry in India: 31 months Period: Effect of Patent (Amendment) Rules, 2016

Under Patent Cooperation Treaty (PCT), applicant gets varying period of 30-34 months to enter different states with National Phase applications. In the case of India, this period is 31 months. Decisions have been given by Hon’ble High Courts of India regarding extendible or non-extendible nature of this period of 31 months. In the case of NOKIA CORPORATION VS DEPUTY CONTROLLER OF PATENTS AND DESIGNS decided by Hon’ble MADRAS HC, Indian application was filed as National Phase Entry on August 18, 2009 claiming a priority from an earlier US application 11/622, 147 dated January 11, 2007. Indian Patent Office rejected to... Read More

Choosing India as International Search Authority (ISA) and International Preliminary Examining Authority (IPEA): Who Can and Who Cannot

It is long since October 15th, 2013, that India started to work as International Search Authority (ISA) and International Preliminary Examining Authority (IPEA).  Agreement between the Indian Patent Office (IPO) and the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in respect of the same can be accessed here. With the introduction of Patent (Amendment) Rules, 2016, that took effect from May 16, 2016, India has brought in provision for Expedited Examination of Patent applications for which request may be made on any of the following grounds, namely:-  (a) that India has been indicated as the competent ISA... Read More

Federal Circuit Rules 180-Day Post-Licensure Notice is Mandatory in Biosimilar Litigation

In Amgen v. Apotex (No. 2016-1308), the US Court of Appeals for the Federal Circuit on July 5, 2016 affirmed a district court’s ruling that a biosimilar applicant must provide a reference product sponsor with 180 days’ post-licensure notice before commercial marketing of a biosimilar product begins, regardless of whether the applicant provided the § 262(l)(2)(A) notice of USFDA review.             In Amgen v. Apotex, the Federal Circuit rejected Apotex’s contention that the 180-day pre-marketing notice requirement does not apply to biosimilar applicants who participated in the “patent dance” procedure of the Biologics Price Competition and Innovation Act ("BPCIA"), expanding... Read More