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IPO Daily News™

Friday, 15 March 2019 8:09 am

IPO ANNOUNCES CREATION OF DIVERSITY & INCLUSION COMMITTEE

IPO is pleased to announce the creation of a permanent Diversity & Inclusion Committee. President HENRY HADAD (Bristol-Myers Squibb) has appointed SHRUTI COSTALES (HP Inc.) as the Chair and HASSEN SAYEED (O’Melveny & Myers LLP) as the Vice Chair. The Committee’s mission will be to establish organizational focus around diversity and inclusion by recommending policy to the IPO Board, ensuring programs and speaker panels are diverse, ensuring that Standing IP Committees incorporate IPO’s Membership and Values into their activities, and overseeing the creation and maintenance of resources groups.

NEW RESOURCE GROUPS FOR IPO MEMBERS

The IPO Diversity & Inclusion Committee is organizing Resource Groups for underserved populations in the membership who self-identify/volunteer as being interested in participating. The Resource Groups will serve as networking groups to encourage professional development within the IP profession. All individuals who are members of IPO are welcome to join any Resource Group regardless of their identities. IPO welcomes suggestions from members on Resource Groups that should be formed. To suggest a group, contact Lorna Soderberg.

* SUMMARIZING TESTIMONY IS NOT A CLEAR FINDING OF NO MOTIVATION TO COMBINE

Forest Labs., LLC v. Sigmapharm Labs., LLC, 17-2369 — Yesterday in an opinion by Judge MOORE, the Federal Circuit vacated and remanded a district court’s validity determination. The patent related to a sublingually administered, atypical antipsychotic containing asenapine maleate, marketed under the brand Saphris®. Sigmapharm and others filed abbreviated new drug applications (ANDAs) seeking FDA approval for generic versions. The Federal Circuit vacated the district court’s judgment of non-obviousness because of the lack of an express finding by the court that compliance concerns with patients who have trouble swallowing would not provide a motivation to combine. It explained that the district court discussed compliance concerns and summarized expert testimony but that “summarizing testimony … is not a clear finding.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO PUBLISHES UPDATED STUDY ON PTAB MOTIONS TO AMEND, ANNOUNCES PILOT PROGRAM

This week the USPTO published the latest installment of its study of motions to amend in post grant proceedings at the Patent Trial and Appeal Board. Among other findings, the study shows that 114 motions to amend were filed in fiscal year 2018, up from 50 filed in 2017.

Also as regards to motions to amend, today the USPTO published a notice in the Federal Register announcing a pilot program for motions to amend practice and procedures that begins today and will run for approximately one year. Under the pilot program, a patent owner will have the option to receive preliminary guidance from PTAB concerning its motion to amend and to file a revised motion to amend after receiving the petitioner’s opposition to its motion and/or preliminary guidance from PTAB. Alternatively, the patent owner may choose to pursue a motion to amend “in effectively the same way as current practice.” The notice also indicates that, in response to comments received last year on proposed modifications to motions to amend practice, certain due dates have been modified to give parties additional time to prepare filings and evidence.