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 blog written by Dennis Crouch – www.patentlyo.com.
▪ On March 25, 2020, Professor Crouch discussed the combination of the transitional phrase “consisting of” and a claim limitation “optionally.” The issue was involved in Galderma Labs., L.P. v. Amneal Pharms. LLC, No. 2019-1021, (Fed. Cir., March 25, 2020) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1021.Opinion.3-25-2020_1557363.pdf ) (https://patentlyo.com/patent/2020/03/consisting-and-optionally.html).
▪ On March 26, 2020, Professor Crouch discussed the consequences in claim construction from “a single inartful statement in the prosecution history.” In the case at Genentech, Inc. v. Iancu, 2019-1263, 2019-1267, (Fed. Cir., Mar. 26, 2020) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1263.Opinion.3-26-2020_1558079.pdf), the patentee’s preferred claim construction was not applied because a claim term was not defined in the specification, such that a comment in the prosecution history confined the term to another connotation. (https://patentlyo.com/patent/2020/03/inartful-statement-prosecution.html).
United States Patent and Trademark Office – The U.S. agency for patents and trademark registrations – uspto.gov
▪ On March 16, 2020, the USPTO offered relief to patent and trademark applicants, patentees, and trademark owners affected by the coronavirus outbreak. Certain petition fees are waived, but no extensions of dates or waivers of requirements set by statute are available. https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf.
▪ All in-person meetings, interviews, and oral hearings scheduled to be held at USPTO offices will now be conducted remotely by video or telephone, until further notice. Parties will receive further instructions in advance of the interview, hearing, or meeting. https://www.uspto.gov/coronavirus.
▪ On March 19, 2020, the USPTO waived any requirements for original handwritten signatures due to the COVID-19 outbreak. https://www.uspto.gov/sites/default/files/documents/Waiver%20of%20Original%20Handwritten%20Signature%20Requirement%20Due%20to%20the%20COVID-19%20Outbreak%20–%20Signed%20and%20Dated%20–%203-19-2020.pdf.
▪ On March 31, 2020, the USPTO provided a 30-day extension for some deadlines and fees due to the COFID-19 Pandemic, for the time period between March 27, 2020 through April 30, 2020. This extension does not cover original filing deadlines, PCT deadlines, national stage filing deadlines, deadlines for filing a non-provisional application following a provisional application; or a deadline for filing an inter partes review petition. https://www.uspto.gov/sites/default/files/documents/Patents%20CARES%20Act.pdf
* The USPTO provides FAQs for patent time extensions (https://www.uspto.gov/patent/laws-and-/cares-act-faqs) and trademark time extensions (https://www.uspto.gov/trademark/laws-regulations/cares-act-faqs) related to the COVID-19 Pandemic.
▪ On May 4, 2020, the USPTO announced in Press Release 20-10 launch of a platform form licensing patents for key technologies, focusing initially on COVID-19 technologies. (https://www.uspto.gov/about-us/news-updates/uspto-launches-platform-facilitate-connections-between-patent-holders-and).
▪ The USPTO announced on May 6, 2020 that due to the COVID-19 Pandemic it will temporarily permit online filing of plant patent applications. https://www.uspto.gov/about-us/uspto-allow-filing-plant-patent-applications-and-correspondence-patent-electronic-filing.
▪ On May 8, 2020 in Press Release 20-11 the USPTO announced the COVID-19 Prioritized Examination Pilot Program for small entities and micro entities. ( https://www.uspto.gov/about-us/news-updates/uspto-announces-covid-19-prioritized-examination-pilot-program-small-and). On May 18, 2020, the USPTO provided further information on the program (https://www.uspto.gov/about-us/news-updates/uspto-releases-additional-information-covid-19-prioritized-examination-pilot) including providing a dedicated webpage https://www.uspto.gov/initiatives/covid-19-prioritized-examination-pilot.
IPWatchdog – a patent law blog – IPwatchdog.com
▪ On May 11, 2020, Rebecca Tapscott posted an article explaining how the USPTO’s COVID-19 Pilot Program may benefit small companies and individual inventors regarding exploiting COVID-related technologies. (https://www.ipwatchdog.com/2020/05/11/uspto-covid-19-pilot-program-will-benefit-small-companies-individual-inventors/id=121543//).
▪ On May 20, 2020, a post by Kim Jordahl discussed the Federal Circuit review of a PTAB decision. Cochlear Bone Anchored Solutions AB v. Oticon Medical AB, 2019-1105, 2019-1106, (Fed. Cir., May 15, 2020) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1105.Opinion.5-15-2020_1588550.pdf). The Court agreed with the PTAB that the claim preamble in question was non-limiting and merely a statement of use of the claimed apparatus. (https://www.ipwatchdog.com/2020/05/20/non-limiting-preamble-costs-cochlear-cafc/id=121752/).
AIPLA – the profession’s national organization – see AIPLA.org
AIPLA has its annual meeting scheduled for October 22-24, 2020. Information on this meeting and other AIPLA meetings is available at https://www.aipla.org/events. Check to make sure a meeting has not switched to a virtual format due to you-know-what.
▪ The Chisum Patent Academy was scheduled to hold one seminar in 2020, in Boston, Massachusetts on October 1-2, 2020. Instead, their seminars are canceled until 2021, due to you-don’t-need-to-ask. More information available 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.