December 16, 2022

Why Cellect’s Federal Circuit case is one to watch


Richard McCormick is featured in this article.

“Patent owners are very interested in how this case comes out,” says Richard McCormick, partner at Mayer Brown in New York.

McCormick at Mayer Brown says litigators will have to push really hard to show that patents with different expiration dates aren’t obvious variants over each other if the Federal Circuit upholds the USPTO ruling.

“OTDP haunts litigators all the time, but will be far more important if the case is affirmed,” he says.

He adds that lawyers will have to rally all the evidence they can, including secondary considerations and
other expert evidence to overcome OTDP invalidation.

McCormick notes that buyers always keep PTA in mind when they look at portfolios. If they see potential problems with the targets’ portfolios with respect to PTA and OTDP, they’ll have to seriously consider whether to pull the trigger, wait, or not go through with deals.

And McCormick at Mayer Brown adds that parties give up days they got back from the USPTO delay and lose some enforceable patent life if they file terminal disclaimers.

He adds that the current system gives patent owners a Hobson's choice. He points out that if the patent office unduly delays prosecution, intellectual property holders can either
get patents issued without the benefit of any PTA they would otherwise be entitled to or run the serious risk of invalidation. “That’s really not a choice. No one’s going to risk invalidation.

And that goes against the statutory language of the PTA in which you’re supposed to get that time back,” he says.

McCormick says Technology Center 1600, which handles biotech and organic chemistry, has higher than average tendencies towards delays. PTA has been going up over the past two years, he adds.

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