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
▪ Must Invention Conception be Immaculate? – On July 28, 2021, Prof. Dennis Crouch discussed the concerns relating to joint inventorship. He provides an overview as to how simultaneous conception is not required, but the co-inventors may collaborate in various ways and still be joint inventors. (https://patentlyo.com/patent/2021/07/conception-joint-inventors.html).
▪ “Shall Be” is Not Enough to Assign Inventions – On August 2, 2021, Prof. Dennis Crouch reviewed the case, Omni MedSci, Inc. v. Apple Inc., slip opinion, 2020-1715, 2020-1716. (Fed. Cir., Aug. 2, 2021) (https://cafc.uscourts.gov/sites/default/files/opinions-orders/20-1715.OPINION.8-2-2021_1812582.pdf), which addressed the contract language of an employment agreement for the assignment of inventions. Notably, provisions that stated that patents and inventions “shall be the property of the University,” did not assign a present transfer of a present or future right, but, at most, reflects a “future agreement to assign.” Take another look at those employee agreements. (https://patentlyo.com/patent/2021/08/property-assignment-patent.html).
▪ Obviousness of a Design Patent – On August 23, 2021, Prof. Dennis Crouch discussed Campbell Soup v. Gamon Plus, 2020-2344, 2021-1019, slip opinion (Fed. Cir., Aug. 19, 2021) (https://patentlyo.com/media/2021/08/20-2344.OPINION.8-19-2021_18219521.pdf) which considers obviousness of a design patent, which is analyzed in reference to 35 U.S.C. § 103, although the methodology is different. (https://patentlyo.com/patent/2021/08/obviousness-design-patent.html).
▪ Four Points Don’t Make A “Range” – Professor Crouch posted on November 24, 2021, a discussion of the written description requirement for ranges of values, as considered in Indivior UK Limited v. Dr. Reddy’s Labs S.A., slip opinion, 2020-2073, 2020-2142 (Fed. Cir., Nov. 24, 2021) (https://cafc.uscourts.gov/opinions-orders/20-2073.OPINION.11-24-2021_1870396.pdf). The court found that the specification needed to more expressly state the range claimed, such that a “patent is not a hunting license” requiring the reader to patch together the range stated in the claim. (https://patentlyo.com/patent/2021/11/written-description-points.html).
▪ Volunteering for CLE (Not Yet) – Professor Crouch referenced a statement by the Office of Enrollment and Discipline for the USPTO that the planned commencement of voluntary continuing legal education for registered practitioners is now delayed from Spring 2022 to November 1, 2024. (https://patentlyo.com/patent/2021/12/voluntary-continuing-certification.html).
AIPLA – the profession’s national organization – see AIPLA.org
▪ AIPLA’s 2022 Spring Meeting is tentatively scheduled for May 17-19, 2022, at The Roosevelt in New Orleans. More info at https://www.aipla.org/detail/event/2022/05/17/default-calendar/aipla-2022-spring-meeting. AIPLA’s 2022 Annual Meeting is scheduled for October 27-29, 2021, at the Gaylord National Resort and Convention Center in National Harbor, Maryland. More information is available at https://www.aipla.org/detail/event/2022/10/27/default-calendar/aipla-2022-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.