MoFo Life Sciences

October 23, 2023 - Intellectual Property, Regulatory
Top 10 Considerations in Licensing Cleantech Innovations
By: Matthew A. Ferry, Anita Choi and Emily Jane Roberts Ph.D.
Spurred by both planetary and economic needs, the industry commonly referred to as “cleantech”—short for “clean technology”—has been on the rise. Current estimates predict clean energy technologies could dominate oil and gas by as early as 2030 (Global cleantech market size by country 2030 |
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October 11, 2023 - Intellectual Property
Retaining Your Patent Priority Date in Europe: Formal Priority Given a Rebuttable Presumption in Favor of Applicant/Patentee
By: Jeffrey W. Schmidt Ph.D. and Karen G Potter Ph.D.
On October 10, 2023, the Enlarged Board of Appeal of the European Patent Office (EPO) issued a groundbreaking decision that reflects a major change in how formal priority is assessed at the EPO during examination and in post-grant opposition proceedings, to the benefit of
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September 15, 2023 - Litigation, Intellectual Property, United States
Patent Term Adjustment Takes a Hit in Cellect Decision
By: Meghan McLean Poon Ph.D. and Zachary A. Nora Ph.D.
Recently, the Federal Circuit addressed a significant issue of first impression with respect to obviousness-type double patenting (ODP), holding that ODP applies to patent claims that claim priority to the same application and have different expiration dates due only to patent term adjustment (PTA).
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August 29, 2023 - Intellectual Property, Medical Devices + Diagnostics, United States
A Glimmer of Hope for Simplified Patenting of Medical Diagnostics in the United States
By: Michelle Celine Bradley Ph.D. and John D Chapman Ph.D.
Should the recent bill entitled the Patent Eligibility Restoration Act of 2023 (PERA) become law, it would override the existing jurisprudence and redefine which inventions are eligible for patenting under 35 U.S.C. § 101. By way of the Patent Act of 1952, the United
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August 14, 2023 - Intellectual Property, United States
Biden Executive Order Has Potential to Discourage U.S. Company Participation in Federal Research
By: Tina D. Reynolds
A new Biden administration Executive Order proposes to enforce more rigorously U.S. manufacturing requirements attendant to federally funded inventions. While the aim of the Executive Order is to support domestic manufacturing and jobs, the policy could have the unintended effect of discouraging U.S. company
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July 31, 2023 - Intellectual Property, United States
It Takes Two to Taco: Taco John’s Abandons “Taco Tuesday” Trademark Registration
By: Muzamil Huq, Joyce Liou and Morgan O'Neill Mitruka
On July 18, 2023, the phrase “Taco Tuesday” was returned to the public after Taco John’s submitted a notice of abandonment for its TACO TUESDAY trademark registration before the United States Patent & Trademark Office’s Trademark Trial and Appeal Board. Taco John’s, a popular
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July 20, 2023 - Intellectual Property, Litigation, Pharma, Biotech, United States
Obviousness in Drug Combinations – Unexpected Results Vs. Unexpected Mechanisms of Action
By: Mark D. McBriar Ph.D., Bu Yin Ph.D., Ashley E. Sperbeck and Shawn O. Meade Ph.D.
Ascertaining the differences between prior art and claims at issue requires interpreting the claim language and considering both the invention and the prior art references as a whole. [1] The Supreme Court emphasized “the need for caution in granting a patent based on the
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July 10, 2023 - Cell + Gene Therapy, Biotech, Intellectual Property, Litigation, Pharma
Mitigating Patent Risk in Gene Therapy Development
By: Daralyn J. Durie, Janet Xiao Ph.D. and Katherine E. McNutt
This article was first published by IAM on June 2, 2023 in its Special Report 2023 Q2: New Frontiers of Pharma and Biotech IP Strategy. Daralyn Durie, Janet Xiao and Katherine McNutt of Morrison Foerster explore strategies to reduce the threat of infringement liability
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July 05, 2023 - Intellectual Property, Licensing + Commercial, Agtech
Top 10 Considerations for Transactions Involving Alternative Protein Companies
By: Matthew A. Ferry and Sarah E. Bloch Ph.D.
Matthew Ferry and Sarah Bloch authored an article for the Daily Journal discussing the top ten aspects alternative protein companies should consider when planning for and negotiating research and commercial agreements. Read the full article.
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June 20, 2023 - Biotech, Pharma, Intellectual Property, Litigation, Cell + Gene Therapy
Practical Strategies for Protecting Innovations Under the Doctrine of Equivalents
By: Kelsey J. Roberts Kingman Ph.D. and Bu Yin Ph.D.
Recent case law highlights enablement and written description challenges for genus claims.[1] Given the challenges of enforcing genus claims, the doctrine of equivalents (DOE) may become a more important tool for patentees when literal infringement is unavailable. As discussed below, the outlook for successful
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Topic Archives: Intellectual Property

Top 10 Considerations in Licensing Cleantech Innovations

By: Matthew A. Ferry, Anita Choi and Emily Jane Roberts Ph.D.

Retaining Your Patent Priority Date in Europe: Formal Priority Given a Rebuttable Presumption in Favor of Applicant/Patentee

By: Jeffrey W. Schmidt Ph.D. and Karen G Potter Ph.D.

Patent Term Adjustment Takes a Hit in Cellect Decision

By: Meghan McLean Poon Ph.D. and Zachary A. Nora Ph.D.

A Glimmer of Hope for Simplified Patenting of Medical Diagnostics in the United States

By: Michelle Celine Bradley Ph.D. and John D Chapman Ph.D.

Biden Executive Order Has Potential to Discourage U.S. Company Participation in Federal Research

By: Tina D. Reynolds

It Takes Two to Taco: Taco John’s Abandons “Taco Tuesday” Trademark Registration

By: Muzamil Huq, Joyce Liou and Morgan O'Neill Mitruka

Obviousness in Drug Combinations – Unexpected Results Vs. Unexpected Mechanisms of Action

By: Mark D. McBriar Ph.D., Bu Yin Ph.D., Ashley E. Sperbeck and Shawn O. Meade Ph.D.

Mitigating Patent Risk in Gene Therapy Development

By: Daralyn J. Durie, Janet Xiao Ph.D. and Katherine E. McNutt

Top 10 Considerations for Transactions Involving Alternative Protein Companies

By: Matthew A. Ferry and Sarah E. Bloch Ph.D.

Practical Strategies for Protecting Innovations Under the Doctrine of Equivalents

By: Kelsey J. Roberts Kingman Ph.D. and Bu Yin Ph.D.