Ways to Avoid Having your Patents Cellected*

Tom Irving, Partner, Marbury Law Group, USA

The Court of Appeals for the Federal Circuit caused frustrations when it decided to affirm the U.S. Patent Office’s findings that claims in four patents were unpatentable because they are not patentably distinct from claims in other patents in the same family. In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023). In view of the oral argument, the outcome of this case was virtually certain. The issue before the court was, at its core, a straightforward one—was the decision by the Patent Trial and Appeal Board (PTAB) finding the challenged claims unpatentable for obviousness-type double patenting (ODP) to be affirmed? In the appeal, the court noted that for the first time, it was addressing how a statutorily authorized extension, Patent Term Adjustment (PTA), interacts with ODP.

Tom Irving has some 48 years of experience in intellectual property law. His U.S. pharma practice includes America Invents Act (AIA) post-grant proceedings, due diligence, counseling, patent prosecution, reissue, and reexamination. In addition to advising on procuring strong U.S. patents, Tom counsels clients on a wide range of mainly pharmaceutical matters, including pre-litigation, Orange Book listings of patents covering FDA-approved drugs, infringement issues, enforceability, supplemental examination, and validity analysis, including Obviousness-Type Double Patenting and Safe Harbor protection under 35 U.S.C. section 121.. He has served as lead counsel in numerous patent interferences, reissues, and reexaminations; as lead counsel in numerous AIA post-grant proceedings; and as an expert witness in patent litigation and patent procurement.

Marbury Law Group: STRATEGIC INTELLECTUAL PROPERTY COUNSELING Marbury attorneys transform your ideas and innovations into valuable IP assets. Our attorneys manage large, medium, and small patent portfolios, and recognize your need for prompt, high quality strategic advice. We help start-up and emerging technology companies leverage their intellectual assets to achieve their business goals. In fact, many of our team members have worked at start-ups, and understand the demands facing start-up and emerging technology companies. Our attorneys work with your technical personnel to harvest potential intellectual property from your innovative development work. We have the technical skills to understand your technology and how your innovations can provide you with competitive advantages. Our diverse technical backgrounds, graduate engineering degrees, former industry, and USPTO experience allow us to quickly grasp, describe, and claim the inventions in your patent applications. Our lower overhead allows us to offer flat fees and keep our billing rates significantly lower than those of ’big-law” firms, which allows us to take the time to understand the technology behind each invention and to provide cost effective answers, strategies, and patent applications. Furthering your business is our priority. Your business plan becomes the focus of our IP counseling and strategic advice. Let us put our knowledge and experience to work for you.