Author: Thomas DeFelice

Dr. Joseph Suhadolnik Joins the Dilworth IP Team

Dilworth IP is very pleased to announce that Dr. Joseph Suhadolnik, formerly of Chemtura Corporation, has joined the firm’s Chemical Patent Practice. Dr. Suhadolnik is a patent agent with a very strong background in polymer chemistry, dyes/pigments, industrial coatings, batteries, UV absorbers and several other technologies. Prior to his work at Chemtura, Joe worked as a patent agent at Ciba Specialty Chemicals and at BASF after its acquisition of Ciba. He holds a Ph.D. in organic chemistry from the University of Minnesota and performed his postdoctoral research at Rensselaer Polytechnic Institute in Troy, NY.

Dr. Suhadolnik is a named inventor on over 65 patents, some of which have set new standards in their respective industries. Having spent most of his career as both a research scientist and as a patent agent, Joe’s strong technical credentials and his in-house experience further strengthens the firm’s already very strong chemical practice and our depth of in-house experience. Dr. Suhadolnik will be working from Dilworth IP’s Connecticut offices.

We are very excited to welcome Joe to the firm and look forward to working with him!

To contact Joe directly, please email him at jsuhadolnik@dilworthip.com.

Upcoming Webinar: Worth the Candle and a South African Yellow Canary: Will the Supreme Court Snuff de novo Review of Claim Construction in Teva Pharmaceuticals v. Sandoz?

On October 15, 2014, the U.S. Supreme Court heard oral arguments in Teva Pharmaceuticals v. Sandoz, a case that concerns the amount of deference the Federal Circuit must afford a district court’s construction of patent claims.

Teva, owner of patents on the multiple sclerosis drug Copaxone®, contends that claim construction is intertwined with fact finding, that Federal Rule of Civil Procedure 52(a) should apply to claim construction, and that a district court’s claim construction should only be set aside for clear error. In short, the Federal Circuit’s long-standing practice of de novo review of claim construction—which was validated by the Supreme Court’s 1996 decision in Markman v. Westview Instruments and confirmed by the Federal Circuit (6-4) en banc in February 2014 in Lighting Ballast Control v. Philips Electronics—should be overruled.

Sandoz and other generic drug makers counter that Markman remains good law, that Rule 52(a) applies to fact finding outside the context of claim construction, that claim construction is a purely legal matter best left in the hands of a judge rather than a jury, that the current law promotes uniformity and predictability, and that the Federal Circuit correctly reviews claim construction de novo.

Which side will prevail? Who won the oral argument? Which justices will reverse their position almost two decades post-Markman?

We’ll review important background decisions, analyze the briefs, dissect the justices’ questions, and speculate about how the Supreme Court will rule. Join us—it should be “worth the candle”!

CT Innovations and Dilworth IP Launch a New Resource for Entrepreneurs

Connecticut Innovations (CI), the leading source of financing for Connecticut’s innovative, growing companies, has partnered with Dilworth IP on a new four part series entitled “Patents: Beyond the Basics”. The series consists of several answers to FAQs from CI’s venture companies and entrepreneurs on intellectual property strategy and is authored by six Dilworth IP attorneys, Michael Dilworth, Dr. Anthony Sabatelli, Dr. Jonathan Schuchardt, Gerard Wissing, William Reid, and Fred Spaeth. The Firm is very excited to have been selected for this distinction. Part I of this series is now available on CI’s website. Subsequent editions to the series will be launched over the next several weeks. Please stay tuned for further updates.

Dilworth IP Announces Partnership with the Yale Entrepreneurial Institute

Dilworth IP is very excited to announce our newly formed partnership with the Yale Entrepreneurial Institute (YEI). YEI’s mission is to foster innovation at Yale by providing resources and education in the form of incubator space, seed funding, and mentoring, as well as educational programs on the legal and business considerations of entrepreneurship. This mission meshes well with Dilworth IP’s commitment to education and innovation. Seeing the great value in encouraging and mentoring students in their pursuit of entrepreneurial success, the firm has partnered with YEI to provide legal resources to its start-ups in the form of educational training, resource materials, and counseling.

Upcoming Webinar: Filing in the Fast Lane – Leveraging the Patent Prosecution Highway to Get You from “A” to “B” Quicker (and Cheaper!)

While there are certainly rules of the road that must be followed, generally speaking, the current version of the Patent Prosecution Highway (PPH) can be a cost-effective and user-friendly means for in-house counsel and small business owners to get their patents granted in multiple international jurisdictions. It hasn’t always been so in the past, and there are a few key requirements that must be met, so knowing when the highway is an option and when it’s not the best route is critical. This webinar will focus on the improvements made to the PPH through the more recent IP5 and GBBH agreements, providing a streamlined, filing framework which could potentially save patent owners tens-of-thousands of dollars in international prosecution costs per application. With several examples and some recent statistics, this introduction to the PPH will be time well spent for in-house patent counsel concerned about departmental budgets, small business owners hoping to protect their patents internationally, and outside counsel seeking ways to better advise their clients. William Reid, Partner at Dilworth IP will be presenting a free webinar entitled Filing in the Fast Lane – Leveraging the Patent Prosecution Highway to Get You from “A” to “B” Quicker (and Cheaper!) on Wednesday, September 24th from 1pm – 2pm EDT. Read more to register…

USPTO Publishes Comments on Guidance for Patent Eligible Subject Matter

Back on March 4 the U.S. Patent and Trademark Office issued what has turned out to be a very controversial Guidance on patent eligible subject matter. This Guidance was issued in response to several high-profile Supreme Court decisions involving questions of patent eligibility under 35 U.S.C. § 101. The USPTO has since held a public forum and meeting on the Guidance, at which Dilworth IP’s own Dr. Anthony Sabatelli was invited to present, and also invited public comment. These comments, including those submitted by Dilworth IP, have now been published on a USPTO web page devoted to the Guidance.

Top Ten Patent Myths

The rapidly changing landscape of intellectual property law makes it challenging for experts to stay current. Imagine how much more difficult it is for scientists, engineers, and business leaders, who experience IP issues indirectly and less frequently, to appreciate the law’s contours. If you’re already an IP expert, Top Ten Patent Myths will underscore or help you better understand what your in-house business and R&D colleagues or your client groups may not adequately understand about IP matters. If you’re not an IP attorney, you’ll gain a better understanding of patent law and practice, and you’ll quickly recognize when a colleague has fallen victim to one of these “top ten” common misconceptions. Dr. Jonathan Schuchardt, Partner at Dilworth IP will be presenting a free webinar entitled Top Ten Patent Myths on Wednesday, June 25th from 1pm – 2pm EDT. Click through to register for this event.

Dr. Anthony Sabatelli to Present to USPTO on its Recently Issued Guidance on Patentability

Dr. Anthony Sabatelli, Partner at Dilworth IP, has been invited by the United States Patent and Trademark Office to present his perspectives on the USPTO’s recently issued guidance memorandum for determining subject matter eligibility of claims reciting or involving laws of nature, natural phenomena, and natural products. The presentation will take place during a public forum this Friday, May 9th beginning at 1pm EDT. A webcast of the event will be broadcasted. Interested parties can view it by going to https://new.livestream.com/uspto/myriadforum.

Upcoming Analysis on Recent USPTO Guidance on Patentability

Dr. Anthony Sabatelli, Partner at Dilworth IP will be presenting a free webinar entitled What is Patentable? Insight Into the New USPTO Guidance on Wednesday, May 21st from 1pm – 2pm EDT. Interested parties should note that Dr. Sabatelli has been invited by the USPTO to present his comments in person on this Guidance on May 9th and he will relate his impressions on that forum to webinar participants. Further details about the presentation can be found below.

USPTO Soliciting Feedback on Recent Guidance Memorandum Concerning Patentable Subject Matter

The U.S. Patent and Trademark Office (USPTO) will host a public forum on May 9, 2014 to solicit feedback from organizations and individuals on its recent guidance memorandum for determining subject matter eligibility of claims reciting or involving laws of nature, natural phenomena, and natural products (Laws of Nature/Natural Products Guidance). The Laws of Nature/Natural Products Guidance implemented a new procedure to address changes in the law relating to subject matter eligibility in view of recent Supreme Court precedent.

Because this Guidance is an topic of importance to the biotechnology and pharmaceutical industry, Dilworth IP plans to submit comments on the Guidance and to participate in the public forum, and encourages others to do so.

Additional information including event registration, comment submission instructions and directions can be found at http://www.uspto.gov/patents/announce/myriad-mayo.jsp and in the Federal Register Notice: https://federalregister.gov/a/2014-08759.