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Patently-O highlights Sarah A. Kagan’s recent IP Alert on the Federal Circuit arguments in Gilead Sciences v. Merck in its article, “An Interesting Pending Appeal Involving Violation of an NDA to Prosecute an Application.” Click here to read the article. Click here to read Ms. Kagan’s IP Alert on the case.

Which Patent Trial and Appeal Board Trial Decisions Cannot be Appealed? By Sarah A. Kagan The U.S. Court of Appeals for the Federal Circuit heard oral arguments on March 6, 2018, in the appeal of Altaire Pharmaceuticals, Inc. v. Paragon Bioteck, Inc., 2017-1487, from the post grant review (PGR) decision of the U.S. Patent and…

  Inherency and Obviousness: Strange Bedfellows By Sarah A. Kagan The concept of disclosure by inherency exists in tension with the concept of obviousness. Inherency looks back at prior art and analyzes what was disclosed but unappreciated at that time. Obviousness looks at what a person of skill in the art knew at the time…

Banner & Witcoff is recognized for patent prosecution and litigation in Illinois, and prosecution in Washington, D.C. in the 2018 edition of the IAM Patent 1000. Joseph J. Berghammer is recognized for prosecution in Illinois; John P. Iwanicki is recognized for prosecution in Massachusetts; Ross A. Dannenberg, Robert S. Katz, Frederic M. Meeker and Darrell G. Mottley are recognized for prosecution in…

When is a Published Patent Application Entitled to an Earlier Date as a Reference? By Sarah A. Kagan A recent petition to the U.S. Court of Appeals for the Federal Circuit for rehearing en banc has raised questions as to what qualifies as prior art to an invention. The definition of prior art is one…

  Confidentiality Agreements Get Teeth By Sarah A. Kagan Do you consider Non-Disclosure Agreements (NDAs) and Material Transfer Agreements (MTAs) mere hoops to jump through before you can get what you really want? Do you think you can sign them and then forget about them, without a program to monitor and enforce compliance? If so,…

Jeffrey Chang encourages law students’ involvement in non-traditional pro bono opportunities in the American Bar Association’s Before the Bar blog. Click here to read the article.

Heather R. Smith-Carra examines the U.S. Court of Appeals for the Fourth Circuit’s recent decision involving the Digital Millennium Copyright Act safe harbor defense in the IPWatchdog article, “No DMCA safe harbor for Cox’s 13-strike policy for terminating repeat infringers.” Click here to read the article.

  Capturing Inventions from FDA Label Changes By Sarah A. Kagan The U.S. Court of Appeals for the Federal Circuit on January 9, 2018, heard oral arguments in Praxair Distribution, Inc. v. Mallinckrodt Hospital Products, Fed. Cir. No. 2016-2616, -2656, involving an appeal and cross-appeal of an inter partes review (IPR) from the U.S. Patent…

Managing Intellectual Property magazine recently published an article that highlights Banner & Witcoff’s position as a top firm at the U.S. Patent and Trademark Office Patent Trial and Appeal Board in 2017. Click here to read the article.