Patent Licensing and Transactions

Part One of a Two-Part ArticleThis two-part article discusses the various legal and evidentiary requirements for antedating and removing prior art that patent owners should consider when their pre-AIA patents are challenged based on a prior art publication or activity that is not otherwise subject to a statutory bar. It also addresses considerations for petitioners to consider when developing their initial and ongoing invalidity strategies. Part One leads off with a discussion of the evidentiary requirements for proving earlier invention, conception and diligence and actual reduction in practice.

The Supreme Court’s unanimous 2023 decision in Amgen v. Sanofi reshaped enablement analysis for broad genus patent claims. In the wake of Amgen, broad functional claims have been scrutinized rigorously for sufficient disclosure. This article summarizes key post-Amgen decisions, which illustrate how patent drafters and litigators must navigate the fine line between claim breadth and disclosure depth in the post-Amgen era.

Many patent applicants currently face difficulty in obtaining antibody claims because of written description and enablement rejections under 35 U.S.C. §112(a). The USPTO routinely rejects claims as too broad, arguing that such claims cover more antibodies than the specification discloses, or that undue experimentation would be needed to determine whether an antibody reads on the claims. These heightened disclosure requirements increase laboratory costs to generate sufficient data for a §112(a)-proof specification.

In the latest action part of a recent whirlwind of PTAB policy and procedural change around the use of so-called “discretionary denial” to refuse to a challenge to the validity of a granted patent, the Acting Director of the USPTO has issued a memorandum creating a new “bifurcated” pretrial procedure to be used for deciding whether or not to proceed with a trial in response to a petition for inter partes review or post grant review of a granted patent.

The Patent Eligibility Restoration Act (PERA) proposes a solution to a complex debate: What can be patented, and when do nature and thoughts become property? This article provides an overview of the PERA bill, examines the current issues with Section 101 of the Patent Act, the specific proposals of PERA, and the existing pros and cons of the bill.

The U.S. patent legal landscape in 2025 is poised for change. The incoming presidential administration is coupled with interim changes in leadership at the USPTO after Kathi Vidal’s departure, and several newly vacant, fillable commissioner seat openings at the ITC. Amid that backdrop, many pieces of proposed patent legislation are pending in Congress which could further — or possibly stifle — modern trends in American patent law, and could alter our innovation landscape for years to come. This article surveys that pending patent legislation.

How do you determine if ongoing royalty obligations that extend beyond the life of underlying patent protection, even if agreed to by the contracting parties, are enforceable? A recent decision by the U.S. Court of Appeals for the Third Circuit shows what types of license arrangements pass the test.

The LJN Quarterly Update highlights some of the articles from the nine LJN Newsletters titles over the quarter. Articles include in-depth analysis and insights from lawyers and other practice area experts.