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 April 30, 2021, Prof. Dennis Crouch discussed Bio-Rad Laboratories, Inc. v. ITC, slip opinion, 2020-1785, (Fed. Cir., Apr. 29, 2021) which found that a former employer was not entitled to pre-conception ownership of inventors who later invented with a later company. One key aspect was that the duty to assign as stated in the contract with the former employer specifically extended to “All inventions . . . which I may solely or jointly conceive, develop, or reduce to practice during the period of my employment by Bio-Rad.” The interpretation was that the agreement only extended to intellectual property, but not “ideas.” (https://patentlyo.com/patent/2021/04/invention-innovations-employment.html).
Holland & Knight Section 101 Blog – a blog providing news and analysis on eligibility issues involving 35 U.S.C. § 101 – https://www.hklaw.com/en/insights/blogs/section-101-blog
▪ On May 4, 2021, Allison M. Lucier discussed a recent decision, Whitserve LLC v. Dropbox, Inc., slip opinion, 2019-2334 (Fed. Cir., Apr. 26, 2021), in which the Federal Circuit affirmed the district court’s finding claims being directed to an abstract idea. The opinion noted that there was no inventive step because the claims “recite generic computer components performing routine conventional functions.” And that the specification did not explain the technological processes supporting the technological improvements. (https://www.hklaw.com/en/insights/publications/2021/05/federal-circuit-requesting-transmitting-receiving-copying-data#page=1).
U.S. Patent and Trademark Office – uspto.gov
▪ On March 23, 2021, the USPTO issued a Federal Register notice seeking public comments on administrative updates to the General Requirements Bulletin for admission to practice before the USPTO in patent proceedings. There are three categories of proposed changes for determining whether an applicant is eligible to take the patent bar exam:
- Expand the list of “Category A” bachelor’s degrees that are accepted as prima facie evidence of the requisite technical and scientific qualifications;
- Expand “Category A” to include advanced degrees (master’s and doctoral degrees); and
- Revise the coursework requirements of “Category B” to be more flexible, but still require at least one core science course that has a lab component.
AIPLA – the profession’s national organization – see AIPLA.org
▪ AIPLA’s 2021 Annual Meeting will be virtual, scheduled for October 28-30, 2021. More information is available at https://www.aipla.org/detail/event/2021/10/28/default-calendar/2021-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 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.
To see OCIPILA’s complete spring 2021 newsletter, click here: OCIPLA Newsletter – March April May 2021