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
* Replying All to Email Messages – On November 7, 2022, David Hricik discussed the recent ABA ethics opinion Formal Ethics Opinion 503 (Nov. 2, 2022) (https://www.americanbar.org/content/dam/aba/administrative/professional_responsibility/aba-formal-opinion-503.pdf) regarding permission to communicate with opposing counsel’s client when the opposing counsel cc’s the client to an email message. Generally, the opinion suggests that responding to the email message in a “reply all” mode should be interpreted as “invited” by opposing counsel, note that an ABA ethics opinion lacks authority in most states, so be careful. (https://patentlyo.com/hricik/2022/11/opinion-replying-opposing.html).
* Prosecution Disclaimers – On November 16, 2022, Professor Dennis Crouch discussed the Federal Circuit’s decision in Cupp Computing AS v. Trend Micro Inc., Nos. 2020-2262, 2020-2263, 2020-2264, slip opinion (Fed Cir., Nov. 16, 2022) (http://cafc.uscourts.gov/opinions-orders/20-2262.OPINION.11-16-2022_2034079.pdf). The opinion discussed prosecution disclaimers, wherein patentees are not permitted to recapture through claim interpretation specific meanings disavowed during prosecution. However, the disavowal must be clear and unmistakable to preclude such recapture. The opinion also held that prosecution disclaimer in an IPR proceeding is binding in later proceedings, before the USPTO or in court. (https://patentlyo.com/patent/2022/11/disclaimer-now-later.html).
* Patent Law Year in Review – On January 7, 2023, Professor Dennis Crouch gave a presentation of significant developments in patent law from 2022.
Director Review and Ex Parte Lobbying: Exercising the constitutional right to petition the government via shadow request for director review.
Full Scope Enablement and Written Description: Increased focus by both the USPTO and the Federal Circuit. Pending SCOTUS cases of Amgen v. Sanofi and Juno v. Kite.
Patents as Commodity: Many folks are treating it as such.
Broad IPR Estoppel: CalTech v. Broadcom/Apple. Pending before the Supreme Court.
Who is the Inventor: AI and Corporation as the inventor. Thaler v. Vidal cert petition likely in January 2023.
Eligibility: Tropp and Interactive Wearables are not great vehicles for Supreme Court review. Hopefully, IBM petitions its case from IBM v. Zillow.
Patent Venue: Lots still happening in W.D.Tex. IMO, parties arguing inconvenient venue don’t really care about convenience. Their basic concern is that they want to escape from Judge Albright’s courtroom and raise costs on to the patentee.
You can review the slides of the presentation at https://cdn.patentlyo.com/media/2023/01/Patent-Year-in-Review.pdf. https://patentlyo.com/patent/2023/01/patent-year-review.html.
United States Patent and Trademark Office – The U.S. agency for patents and trademark registrations – uspto.gov
* Cancer Moonshot Expedited Examination Pilot Program – The USPTO announced on December 8, 2022 that beginning February 1, 2023 a new program will expedite patent applications pertaining to a broad scope of technologies to prevent cancer and cancer mortality. The program is capped at a total of 1,000 grantable petitions. This program replaced the USPTO’s Cancer Immunotherapy Pilot Program, which pertained to methods of treating a cancer using immunotherapy, and terminates on January 31, 2023. (https://www.uspto.gov/about-us/news-updates/uspto-announces-cancer-moonshot-expedited-examination-pilot-program).
Patent Docs – A patent blog – patentdocs.typepad.com/patent_docs
* On January 8, 2023, Donald Zuhn mentioned that the USPTO issued a notice (https://www.uspto.gov/sites/default/files/documents/filingreceipts.pdf) for applicants to review filing receipts issued between March 2022 and mid-October 2022 as a switch of systems may have introduced errors involving foreign filing license notifications and publication information. Register notice (https://www.gpo.gov/fdsys/pkg/FR-2017-01-12/pdf/2017-00568.pdf) seeking public comments on whether the accelerated examination program should be discontinued. (https://www.patentdocs.org/2023/01/uspto-issues-notice-regarding-certain-filing-receipts-issued-between-march-and-october-2022.html).
AIPLA – the profession’s national organization – see AIPLA.org
* AIPLA’s Mid-Winter Institute will be held on January 31 to February 3, 2023; the 2023 Spring Meeting on May 10 to 13, 2023; and AIPLA 2023 Annual Meeting from October 19 to 21, 2023. More information is available at https://www.aipla.org/events.
* The Chisum Patent Academy scheduled to hold one seminar in 2020, Boston, Massachusetts on October 1-2, 2020. Instead, the Boston seminar was then scheduled for a time in 2021, due to you-know-what. Well, that didn’t happen. Maybe 2023? For now, the landing page states, “Due to the Covid-19 pandemic, the Chisum Patent Academy has postponed its live seminars.” 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 email@example.com.