by Frederic M. Douglas and James E. Hawes
This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues.
Patently-O – a patent law blog – Patentlyo.com
▪ Deferring Subject Matter Eligibility Rejection Responses – A January 9, 2022 post describes a new pilot program for the USPTO, the Deferred Subject Matter Eligibility Response (DSMER) Pilot Program (https://www.uspto.gov/patents/initiatives/patent-application-initiatives/deferred-subject-matter-eligibility-response). If the Examiner issues a rejection based on Subject Matter Eligibility, the invitee can defer making arguments or amendments until any other objections or rejections are satisfied. The DSMER Pilot Program is by invitation only and ends on July 30, 2022. (https://patentlyo.com/patent/2022/01/deferred-eligibility-response.html).
▪ Does Prior Publication Extinguish a Trade Secret? – On January 25, 2022, Prof. Dennis Crouch discussed a trade secret case from the Federal Circuit that found that despite a trade secret being found in a prior publication cited over 1,200 times, the information therein could still be considered a trade secret if a party is in a completely different field. (https://patentlyo.com/patent/2022/01/publication-extinguish-secret.html). The non-precedential opinion is Masimo Corp. v. True Wearables, Inc., slip opinion, Case No. 21-2146, Dkt. No. 57 (Fed. Cir., Jan. 24, 2022) (https://cafc.uscourts.gov/opinions-orders/21-2146.OPINION.1-24-2022_1897012.pdf).
▪ Average Number of Prior Art References Increasing – On January 28, 2022, Prof. Dennis Crouch provided a plot of the average number of references patent applicants submitted, showing a noticeable increase since at least 2004. (https://patentlyo.com/patent/2022/01/applicant-submitted-prior.html). If you look at his post from January 25, 2022, you will also note that Wikipedia is an increasingly popular citation for prior art (https://patentlyo.com/patent/2022/01/wikipedia-prior-art.html).
▪ United States Patent and Trademark Office – The U.S. agency for patents and trademark registrations – uspto.gov
▪ Russia, Russia, Russia – On March 22, 2022, the USPTO announced cutting off all engagement with RosPatent (Russian intellectual property organization), the Eurasian Patent Organization, and intellectual property office in Belarus. If one used RosPatent for the Global Patent Prosecution Highway, that is not going to happen at this time. https://www.uspto.gov/about-us/news-updates/uspto-statement-engagement-russia-and-eurasian-patent-organization.
AIPLA – the profession’s national organization – see AIPLA.org
▪ AIPLA’s 2022 Spring Meeting is scheduled for May 17-19, 2022, at The Roosevelt in New Orleans. More info at https://ams.aipla.org/eweb/DynamicPage.aspx?webcode=EventInfo&Reg_evt_key=10337a53-7955-4140-a1fa-0c613f558e57&RegPath=EventRegFees&FreeEvent=0&Event=2022%20Spring%20Meeting&FundraisingEvent=0&evt_guest_limit=1http://.
▪ AIPLA’s 2022 Annual Meeting is scheduled for October 27-29, 2022, at the Gaylord National Resort and Convention Center in National Harbor, Maryland. More information is available at https://www.aipla.org/detail/event/2022/10/27/default-calendar/aipla-2022-annual-meeting
▪ The Chisum Patent Academy was scheduled to hold one seminar in 2020, in Boston, Massachusetts on October 1-2, 2020. Instead, the Boston seminar was to be scheduled for a time in 2021, due to you-know-what. Well, that didn’t happen. Maybe 2023? Check the website for updates and more information at https://chisum-patent-academy.com/.
For more information about any of the patent topics mentioned consult Patent Application Practice. Trademark topics are discussed in Trademark Registration Practice. Both are published by West and updated twice a year. For patent prosecution or litigation questions, contact Fred Douglas at (949) 293-0442 or by email at firstname.lastname@example.org.
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