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
▪ On September 28, 2020, David Hricik discussed the USPTO’s proposal for voluntary CLE for patent practitioners. Instead of charging a fee and providing a discount for patent-related CLE units, the proposal offers an online registry of patent practitioners who self-certify completion of patent-related CLE. (https://patentlyo.com/hricik/2020/09/voluntary-patent-attorneys.html).
▪ On September 29, 2020, Prof. Dennis Crouch looked at a denied petition for en banc review in Immunex and Roche v. Sandoz (Fed. Cir. 2020) (https://patentlyo.com/media/2020/09/SandozEnBancPetition.pdf) for the guidance on structuring assignments to avoid obviousness-type double patenting. (https://patentlyo.com/patent/2020/09/structuring-assignments-obviousness.html).
▪ On October 15, 2020, Prof. Dennis Crouch discussed the principle of “Broadest Reasonable Interpretation” of a claim, which must be considered “in light of the specification.” The case for this analysis was St. Jude Medical, LLC v. Snyders Heart Valve LLC, 2019-2108, 2019-2109, 2019-2140 (Fed. Cir., Oct. 15, 2020) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2108.OPINION.10-15-2020_1669672.pdf). (https://patentlyo.com/patent/2020/10/reasonable-interpretation-specification.html).
▪ In his October 10, 2020 post, Prof. Dennis Crouch the nonprecedential opinion, Tenstreet, LLC v. DriverReach, LLC, 2020-1101 (Fed. Cir., Oct. 19, 2020) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1101.OPINION.10-19-2020_1671364.pdf) provides a discussion point regarding Section 101 patent eligibility. A patent claim’s advantages over the prior art are not enough without meaningful technological improvements. In other words, “do it on a computer” is not sufficient for patent eligibility. (https://patentlyo.com/patent/2020/10/eligibility-technological-improvements.html).
IPWatchdog – a patent law blog – IPwatchdog.com
▪ A September 22, 2020 post discussed the USPTO’s recent policy retroactively permitting examiners to impose a First Action Final Rejection (FAFR) when the newly presented claims after a continuing application or Request for Continued Examination (RCE) are considered the “same invention” as previously presented claims. The policy was announced in the revised Manual of Patent Examination Procedure (MPEP) Section 706.07(b) (MPEP, E9R10.2019. Fed. Reg. Vol. 85, No. 133 page 41,571). (https://www.uspto.gov/web/offices/pac/mpep/index.html) (https://www.ipwatchdog.com/2020/09/22/newly-created-first-action-final-rejection-policy-adds-needless-complications-patent-prosecution/id=125456/).
AIPLA – the profession’s national organization – see AIPLA.org
▪ AIPLA is planning on holding its Spring Meeting in Seattle, Washington on May 12-14, 2021. No Specification location is provided. Not a surprise. AIPLA has its annual meeting scheduled for October 28-30, 2021. They plan to hold it at the Gaylord National Harbor in Maryland. 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, the Boston seminar is to be scheduled for a time in 2021, due to you-know-what. 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 firstname.lastname@example.org.