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USPTO Announces Glossary Pilot Program to Expedite Software Patent Applications 03/28/2014

Posted by Morse, Barnes-Brown Pendleton in Computer Software & Hardware, Intellectual Property.
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Patent Attorney Sean DetweilerBy: Sean Detweiler

The USPTO recently announced the launch of a new pilot program called the Glossary Pilot Program, to run from June 2nd until December 31st.  The program is for software patent applications and requires an applicant to include a glossary section in the patent application specification to define terms used in the patent claims. Applications accepted into this pilot program will receive expedited processing and be placed on an examiner’s special docket prior to the first office action, and will have special status up to issuance of a first office action.  More information on the program can be found at USPTO.

If you wish to participate in this program, please contact Sean D. Detweiler.

Intellectual Property Today Names MBBP a 2013 Top US Patent Firm 03/18/2014

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, MBBP news.
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In the March 2014 issue of Intellectual Property Today, Morse, Barnes-Brown & Pendleton was named to the list of 2013 Top Patent Firms in the United States. The list is composed of law firms and individual representatives, ranked according to the number of utility patents issued in 2013 where the firm is listed as the legal representative on the issued patent. The number of patents issued in 2013 for which MBBP was identified as the representative law firm increased by 47.4%, ranking MBBP 20th out of 286  in growth, relative to 2012, and landing MBBP at #253 in absolute numbers.

MBBP has had a strong focus on building its patent practice over the last few years and is pleased to have earned placement on this list. Keep an eye out for MBBP’s continued growth in the patent arena.

For the full list, please click here.

Visit our website for more information on our patent practice!

Obtaining Early Biosimilar Patent Certainty in the Aftermath of Sandoz v. Amgen 03/11/2014

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Life Sciences.
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Patent Attorney David FazzolareBy: David Fazzolare

In December 2013, the court case of Sandoz v. Amgen became the first instance in which a court has been asked to interpret the patent litigation provisions of the Biologics Price Competition and Innovation Act (the “Biosimilars Act”), the outcome of which may have significant impact on future biosimilar development.

To learn what this means for biosimilar applicants, see the full article.

Please feel free to contact David with any questions on this topic.

FDA Revises Interpretation of 5-year NCE Exclusivity 03/11/2014

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Life Sciences.
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Patent Attorney Stan ChalvireBy: Stanley Chalvire

In an effort to incentivize the development of certain fixed-combination drug products, the Food and Drug Administration (FDA) recently issued draft guidance revising its interpretation of the 5-year New Chemical Entity exclusivity provisions of the Federal Food, Drug and Cosmetic Act (FD&C Act).

Sections 505(c)(3)(E) and 505(j)(5)(F) of the FD&C Act provide the holder of an approved New Drug Application with the benefit of limited protection from certain competition (e.g., generic competition) in the marketplace.  In particular, newly approved drug products that contain an active ingredient that has not been previously approved by FDA (a so-called “new chemical entity”) are eligible for 5-years of New Chemical Entity (NCE) exclusivity and, with one exception, during such 5-year exclusivity period, third party applications referencing the newly-approved drug cannot be submitted to FDA.

Fixed-combination drug products are combinations of two or more active ingredients in a single dosage form or drug product.  FDA has historically interpreted the 5-year NCE exclusivity provisions of the FD&C Act such that fixed-combination drug products that contained a previously-approved drug product were not eligible for 5-year NCE exclusivity, irrespective of whether such fixed-combination drug product contained a new chemical entity.

Based on FDA’s recognition of the increasing prevalence of fixed-combination drug products in certain therapeutic areas (e.g., cancer and infectious diseases, such as HIV) and the role that such combination products play in optimizing adherence to dosing regimens and improving patient outcomes, FDA has revised its interpretation of the 5-year NCE exclusivity provisions.  As a result of FDA’s revised interpretation, a 5-year NCE exclusivity determination will be made on the basis of each active ingredient in a drug product, such that a drug product that includes a new chemical entity will be eligible for 5-year NCE exclusivity, regardless of whether that drug substance is approved alone or in a fixed-combination.  FDA is soliciting comments in response to its draft guidance until April 25, 2014.

For more information or to discuss FDA’s new interpretation of the NCE provisions, please contact Stan Chalvire.

Duck Dynasty or Patent Dynasty? 03/06/2014

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, New Resources.
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Patent Attorney Sean DetweilerBy: Sean Detweiler

If you are reading this because the title caught your eye, then there is a good chance that you are aware of the recently popular Duck Dynasty® television show on A&E Television Networks, which is in its 5th season as I write this article. The frequent promotion for the show states, “meet the Robertsons; they turned duck calls into a multi-million dollar empire.”What you may not realize is that the family patriarch, Phil Robertson, is also a patent holder. He is listed as the inventor on at least two patents related to duck calls.

The cost of filing for, and obtaining, patent protection is not trivial. Independent inventors, startup companies, and small companies alike all have a common issue with which to grapple at the genesis of their own developing back stories. As a patent attorney, I repeatedly hear the same question, “Should we file a patent application to cover our invention, or should we put that money into the company for manufacturing and/or marketing or other areas to build the business?” My response to these questions usually is, “What is the value of your idea?”

Mr. Robertson made the tough choice early on in a market where there were a lot of competitors making duck calls. He invested in patents when he was just starting his company and making duck calls by hand in a shed in Louisiana. So what is the value of those two Phil Robertson duck call patents? Should you patent your idea? Read the full article to find out.

For more information about how MBBP’s Patent Practice can assist you, please contact Sean D. Detweiler.

Howard Zaharoff Interviewed for HoGo Blog Piece 03/04/2014

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Intellectual Property.
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IP and Technology Licensing Attorney Howard ZaharoffOn March 4 MBBP IP Technology and Licensing Attorney Howard Zaharoff was featured in a blog post by HoGo, a DRM (digital rights management) platform that lets users copy-protect, distribute and manage PDF files. The blog post titled “Ten Questions with… Howard Zaharoff (Part One)” shares his legal perspective on copyrights and copy protection with readers of HoGo Blog Confidential.

Visit HoGo to see the first half of Howard’s interview.

Please feel free to contact Howard with any of your own questions on IP and Copyright law.

Trends: Top 10 Intellectual Property Developments of 2013 02/10/2014

Posted by Morse, Barnes-Brown Pendleton in Client News, Intellectual Property, Legal Developments, New Resources.
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Top 10 Intellectual Property  Developments of 2013Looking back at 2013, there were many interesting developments in intellectual property. In an effort to keep our contacts and clients up-to-date with the most recent IP law changes and court decisions, MBBP has compiled our Top 10 Intellectual Property Developments of 2013:

  1. AIA Institutes “First Inventor to File” System
  2. Association for Molecular Pathology v. Myriad Genetics
  3. Bowman v. Monsanto
  4. Apple and Samsung
  5. Federal Trade Commission v. Actavis, Inc.
  6. Already, LLC v. Nike, Inc.
  7. Kirtsaeng v. John Wiley & Sons, Inc.
  8. The Authors Guild, Inc. v. Google, Inc.
  9. COPPA Rule Amendments
  10. New Top Level Domain Names

For more information on these developments, please view the full article here.

Changes To Implement the Patent Law Treaty 12/19/2013

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property.
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Patent Attorney Stan ChalvireBy: Stanley Chalvire

On Wednesday, December 18, 2013, new U.S. Patent and Trademark Office (USPTO) final rules addressing the implementation of the Patent Law Treaties Implementation Act of 2012 (PLTIA) took effect, revising the rules of practice pertaining to patent cases.  The final rule was issued on October 21, 2013 pursuant to title II of the PLTIA, which amends U.S. law to implement the provisions of the Patent Law Treaty (PLT). The PLT, an international treaty to which the U.S. is a signatory, aims to harmonize and streamline formal procedures pertaining to the filing and processing of patent applications.

Some of the final rule’s notable changes to U.S. patent law generally pertain to: (i) the restoration of patent rights following the unintentional abandonment of patent applications and the unintentional delay of the payment of certain fees; (ii) the restoration of foreign priority or domestic benefit claims after the expiration of the priority period; and (iii) the extension of the time periods for responding to certain USPTO communications.  A copy of the final rules can be accessed at 78 Fed. Reg. 62368.

For more information or to discuss the PLTIA or how the new rules affect your patents or patent applications, please contact Stan Chalvire.

COPPA Rule Amendments are in Effect as of July 1, 2013 07/11/2013

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, Licensing & Strategic Alliances.
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IP Licensing and Trademark Attorney Faith KasparianBy: Faith Kasparian

On July 1, 2013, the amendments to the regulations that implement the Children’s Online Privacy Protection Act (COPPA) went into effect.

The COPPA Rule imposes requirements on operators of websites or online services (including apps) that are directed to children under the age of 13 or that have actual knowledge that they are collecting personal information online from a child under the age of 13. Among other COPPA Rule requirements, operators must provide notice to parents and obtain verifiable parental consent before collecting, using, or disclosing personal information from children under the age of 13. The amendments constitute the first major changes to the COPPA Rule since the Rule went into effect in 2000.

There are five important changes reflected in the COPPA amendments:

  1. Expanded Definitions
  2. Modification to Notice to Parents and COPPA Privacy Policy
  3. Additional Methods for Obtaining Parental Consent
  4. Heightened Responsibilities on Operators
  5. Increased Oversight of Safe Harbor Programs

To learn more about these changes, please see the full article here.

For further information on the COPPA Rule Amendments, please contact Faith Kasparian or Mike Cavaretta.

SCOTUS Fails to Clear the Murky Hatch-Waxman Act Safe Harbor Waters 07/03/2013

Posted by Morse, Barnes-Brown Pendleton in Intellectual Property, Legal Developments, Life Sciences.
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Patent Attorney David FazzolareBy: David Fazzolare

Uncertainty over the extent to which the Hatch-Waxman Act’s safe harbor applies to post-approval activities remains as the Supreme Court declined to grant certiorari in two prominent cases involving the safe harbor this year. In particular, the Court both denied Momenta’s petition for certiorari of the Federal Circuit’s decision in Momenta v. Amphastar Pharmaceutical’s and denied GlaxoSmithKline’s petition for certiorari of the Federal Circuit’s decision in Classen v. GlaxoSmithKine. Whereas the Federal Circuit panel sitting en banc in Classen held that the safe harbor applies only to pre-approval activities, a different panel of the Federal Circuit sitting en banc more recently held in Momenta that the safe harbor applies to certain post-approval activities, such as quality control batch testing to comply with FDA regulations. The safe harbor is codified in 35 U.S.C. 271(e) (1), which provides that “it shall not be an act of infringement to make, use, offer to sell or sell … a patented invention … solely for uses reasonably related to the development and submission of information under a federal law which regulates the manufacture, use or sale of drugs or veterinary biological products.”

The Supreme Court’s refusal to grant certiorari in the Momenta case arguably means that the High Court is willing to accept that certain post-approval activities are protected under the safe harbor. The Court’s failure to opine on the issue, however, leaves interested stakeholders wondering exactly what types of post-approval activities are protected under the safe harbor. Given the divergence of opinions held by existing Federal Circuit justices, and the unresolved conflict between the Momenta and GlaxoSmithKline holdings, the Supreme Court will likely have another opportunity to clarify the types of post-approval activities that are protected under the safe harbor. In the meantime, industry stakeholders contemplating conducting post-approval activities that might infringe a patent would be well-advised to avoid extending the safe harbor beyond the facts of Momenta until the Supreme Court confirms that the safe harbor has indeed become a safe ocean.

To learn more about this topic, please contact David Fazzolare.

Developing an app? Make sure you own it! 02/20/2013

Posted by Morse, Barnes-Brown Pendleton in Games & Interactive Entertainment, Intellectual Property, Licensing & Strategic Alliances.
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MBBP Attorney Mike CavarettaOn February 11th, Adobe published an article “Developing an app? Make sure you own it!” written by MBBP Licensing, Technology and IP Attorney Michael Cavaretta. Mike advises readers on precautions app developers should take in order to ensure their ownership rights are protected.

To read the full article, please visit the Adobe Developer Connection.

For more information on developing an app, feel free to contact Mike.

MBBP Attorneys to Speak at 14th Annual NE IP Law Conference 2011 05/23/2011

Posted by Morse, Barnes-Brown Pendleton in Attorney News, Events, Intellectual Property, Legal Developments.
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IP and Technology Licensing Attorney Howard ZaharoffOn June 16th, Massachusetts Continuing Legal Education (MCLE) is hosting the 14th Annual New England Intellectual Property Law Conference 2011, where attendees can get up-to-speed on trends and new developments that business lawyers and litigators need to know in the ever-changing field of intellectual property law. MBBP IP Licensing and Trademark Attorneys Howard Zaharoff and Faith Kasparian will be attending the conference as faculty members. Howard IP Licensing and Trademark Attorney Faith Kasparianis a program Co-Chair, while Faith will present an overview and update to the FTC’s New Privacy Framework.

For more information and to register for the conference, please visit MCLE.

For more information on intellectual property law, feel free to contact Howard or Faith.

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