October 10-12, 2007 - Stem Cells European Business Summit - Edinburgh, Scotland
October 12, 2007 - Intellectual Property Law Summit 2007 (West LEGALWorks and Intellectual Property Law Association of Chicago) - Chicago, IL
October 16, 2007 - New Patent Rules Update: Implications of Compliance (World Research Group)
October 25-26, 2007 - Biotech and Pharma Public-Private Partnerships Forum (American Conference Institute) - Washington, D.C.***
October 25-27, 2007 - Biotechnology: Patent Prosecution, Licensing, Litigation & Hatch-Waxman (Patent Resources Group) - Palm Springs, CA
November 13-15, 2007 - Pharma and Biotech Collaborative Agreements (American Conference Institute) - New York, NY***
***Patent Docs is a media sponsor of this conference or CLE.
Among the many new requirements contained in the U.S.
Patent and Trademark Office's recently-promulgated new rules on continuation
application filing and claim number restrictions (see links below), the Office has imposed a
deadline of February 1, 2008 for all pending applications to satisfy two
reporting requirements. First,
applicants must identify (in every pending application) every commonly-owned
application or patent that names at least one inventor in common and was filed
or claims priority to an application that was filed within two months of the
subject application. Second, for every
commonly-owned patent application sharing a common inventor and "substantially
overlapping" subject matter, a rebuttable presumption will arise that
there is at least one patentably-indistinct claim in each application (using a
one-way obviousness test) (see 
While heretofore strangely quiet on the subject of the
new rules (see "
rule
or extend the deadline. Although either
would be welcome, the Office's acknowledgement of the justification of IPO's
and BIO's complaints appears to contradict their representations to the Office
of Management and Budget (and that Office's subsequent decision) that the rules
imposed no significant economic impact.
On August 21, 2007, the U.S. Patent and Trademark Office published new
rules concerning continuation and claims practice that will undoubtedly
have a profound effect on the way patent attorneys and agents prosecute
applications before the Patent Office. In view of the 128-page 
First, you should make sure that your SRR complies with the rule and its various elements. In order for the SRR to be timely and considered by the Office, the SRR must be submitted prior to receiving the earlier of either an Office action on the merits or a restriction requirement. Another (rather obvious) requirement is that the application must have pending claims that are drawn to two or more independent and distinct inventions. The SRR should clearly identify the claims which correspond to the various independent and distinct inventions. The SRR also needs to contain an election of invention, which must be made without traverse, and identify the claims directed to the elected invention. Further, the claims of the elected invention must comply with the 
On August 21, 2007, the U.S. Patent and Trademark Office published new
rules concerning continuation and claims practice that will undoubtedly
have a profound effect on the way patent attorneys and agents prosecute
applications before the Patent Office. In view of the 128-page 
A divisional application filed in the absence of a restriction requirement - which the Patent Office refers to as a "voluntary" divisional application - is not really a divisional application at all, but rather, is a continuation application. That is, unless an applicant has already used his or her allotment of continuations, in which case the continuation is merely a stand-alone application, lacking the benefit of its prior-filed predecessor.
moving the antibodies through the clinical stage. Alethia is a biotechnology company based in Montreal, and focuses on developing and discovering therapeutics for cancer and associated disorders. 
Last week, MorphoSys AG 
Last week, 
Following acquisition, Adnexus will be a subsidiary of BMS. Adnexus' portfolio includes oncology biologic Angiocept, an antagonist of the VEGFR-2 pathway currently in Phase I trials. Adnexus' patent portfolio includes over 100 issued and pending patent properties relating to Adnectins and PROfusion, Adnexus' proprietary protein engineering system.
A curious aspect of the recently-promulgated new prosecution rules (see links below) has been the relative silence of the major interest groups in opposition. Perhaps lulled by pundits who declared the new rules "dead" as recently as six months before they were issued, or because the focus was on Capitol Hill initiatives such as "patent reform" or the various biogenerics proposals, the fact is that (except for the overwhelmingly number of negative comments provided to the Office) the major groups who might have been expected to be significantly more vocal (such as the Biotechnology Industrial Organization (BIO) and the Pharmaceutical Research and Manufacturers of America (PhRMA)) before the rules were finally issued were silent. Indeed, the head of BIO appeared to be unprepared for a Patent Docs question regarding litigation challenging the new rules (see "
Patent Reform
"Once bitten, twice why" is the adage, and the response of the patent community to other Patent Office "initiatives" has been decidedly different. The Intellectual Property Owners (IPO) organization submitted and published on their 
In view of the reluctance of the Office to be dissuaded from its mission to provide more "effective" examination by adopting rules seemingly intended to reduce pendency and the application backlog "by all means possible," regardless of its effect on innovation or the integrity of the U.S. patent system, it is unlikely that these efforts in opposition to the proposed rules will have any noticeable effects. It is heartening, however, to see groups who should have an important voice in these deliberations finally attempting to be heard, even if their entreaties will be unlikely to have any positive effects until the current administration is replaced in January, 2009. With any luck, the more deleterious effects of the present regime will be amenable to being reversed once the focus of the Patent Office returns to protecting American innovation rather than meeting merely bureaucratic metrics.
On August 28, 2007, we 
