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
▪ Perjury Can Be Costly – On May 6, 2021, Prof. Dennis Crouch discussed Cap Export, LLC v. Zinus, Inc., slip opinion, 2020-2087, (Fed. Cir., May 5, 2021), which affirmed the trial court’s setting aside a million-dollar judgment of patent infringement due to the patentee’s company president falsely testifying as to a material fact. Prof. Crouch noted that the standard for fraud on the court does not require a showing of a different outcome but-for the fraud. (https://patentlyo.com/patent/2021/05/corporate-patentee-million.html).
▪ Be Careful What You Name Your Company – Also on May 6, 2021, Prof. Dennis Crouch discussed Fast 101 v. Citigroup Inc. (Supreme Court 2021), which was a petition for writ of certiorari resulting from a District Court dismissal soon after the complaint was filed for failure to state a claim in light of 35 U.S.C. 101, hence, a fast 101 dismissal for Fast 101. The Supreme Court denied the petition on June 7, 2021. (https://patentlyo.com/patent/2021/05/fast-lived-name.html).
▪ Patent Practitioner Rules of Ethics – On June 8, 2021, Prof. Dennis Crouch listed key provisions of the USPTO “Representation of Others before the United States Patent and Trademark Office,” effective June 25, 2021, found in 37 CFR 11.1-11.901. (https://patentlyo.com/patent/2021/06/changes-ethics-practitioners.html).
▪ Assignor Estoppel – On June 29, 2021, Prof. Dennis Crouch discussed Minerva Surgical, Inc. v. Hologic, Inc., slip opinion (Supreme Court, June 29, 2021). The Supreme Court maintained assignor estoppel precedent, stating “When an assignor warrants that a patent is valid, his later denial of validity breaches norms of equitable dealing.” However, the Court stated that assignor estoppel should apply only to specific patent claims. (https://patentlyo.com/patent/2021/06/assignor-estoppel-specifically.html).
▪ Prophetic Examples vs. Working Examples – On June 30, 2021, Prof. Dennis Crouch discussed the July 1, 2021 Notice: Properly Presenting Prophetic and Working Examples in a Patent Application, PTO-P-2021-0020 (Fed. Reg. July 1, 2021). The Notice cautions patent applicants to distinguish between working examples and prophetic examples. (https://patentlyo.com/patent/2021/06/disclosed-embodiments-prophetic.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
▪ Patent Eligibility Impacts – On July 12, 2021, Anthony J. Fuga announced that the USPTO is seeking written comments from stakeholders as part of a study on the current state of patent eligibility jurisprudence. The USPTO seeks, inter alia, information on impacts on industry, patent protection strength, investment, and innovation. The deadline for comments is September 7, 2021, and comments must be submitted via the Federal eRulemaking Portal at www.regulations.gov. More information is available in the July 9, 2021 Patent Eligibility Jurisprudence Study in the Federal Register. (https://www.hklaw.com/en/insights/publications/2021/07/it-is-time-to-air-your-section-101-patent-eligibility-grievances).
IPWatchdog – a patent law blog – IPwatchdog.com
▪ On May 20, 2021, Hemant Kumar provided guidance on several common errors in patent drawings that likely will prompt rejections in PCT patent prosecution. (https://www.ipwatchdog.com/2021/05/20/two-key-steps-overcome-rejections-received-pct-drawings/id=133720).
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.
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▪ 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.
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