This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues.
IPWatchdog – a patents and patent law blog – IPwatchdog.com
* On May 30, 2018, Jeff O’Neill discussed patent examiner statistics used by some patent practitioners to improve prosecution strategy. Mr. O’Neill computes a “three-year-grant rate” that reportedly shows the probability of a patent issuing within three years from the first office action. (http://www.ipwatchdog.com/2018/05/30/predicting-future-patent-outcomes/id=97410).
* In a post on May 30, 2018, Joseph Robinson and Robert Schaffer discussed the Federal Circuit’s holding affirming that a failure to claim priority to a provisional patent application when the provisional patent application did not provide a written description of a genus or different species. The message from D Three Enterprises, LLC v. SunModo Corp. Nos. 2017-1909, 2017-1910 (Fed. Cir., May 21, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1909.Opinion.5-18-2018.1.PDF) is that boilerplate language that a patent application covers “all modifications, permutations, additions, and sub-combinations of the disclosed invention that a person of ordinary skill in the art would recognize as within the language of the claims” is not enough to demonstrate possession of a specifically claimed combination. (http://www.ipwatchdog.com/2018/05/30/patents-invalid-lack-written-description/id=97704/).
Patently-O – a blog written by Dennis Crouch – www.patentlyo.com.
* In a June 11, 2018 post, Professor Dennis Crouch explained various examples of “printed publication” as prior art, such as videos, slides, compact discs, posters, conference presentations, and other situations. (https://patentlyo.com/patent/2018/06/defining-printed-publication.html).
* In a June 18, 2018 post, Professor Dennis Crouch discussed whether confidential sales are citable prior art, in light of pending Supreme Court case Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., et al., No. 17-1229 (Supreme Court 2018). (https://patentlyo.com/patent/2018/06/confidential-sales-prior.html).
Patent Docs – A patent blog – patentdocs.typepad.com/
* In a June 25, 2018 post, Michael Borella discussed the situation in Zeroclick, LLC v. Apple, Inc., 2017-1267 (Fed. Cir., June 1, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1267.Opinion.5-30-2018.1.pdf ) wherein the Federal Circuit noted that “program” and “user interface code” are not necessarily nonce words, which may operate as substitutes for “means” and then presumptively make the claims limitations within the scope of Section 112. (http://www.patentdocs.org/2018/06/zeroclick-llc-v-apple-inc-fed-cir-2018.html)
OC Patent Lawyer – James Yang publishes a patent blog for innovators and businesses in Orange County, California – (http://ocpatentlawyer.com/).
* In a May 26, 2018 post, James Yang described in detail the opinion in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, Nos. 2016-2707, 2016-2708 (Fed. Cir., Apr. 13, 2018) (http://www.cafc.uscourts.gov/sites/default/files/16-2707.Opinion.4-12-2018.1_0.pdf ) for the proposition that a method of treatment was deemed eligible for patent protection despite not treating a diagnostic method the same way. (https://ocpatentlawyer.com/treatment-method-eligible-patent/).
AIPLA – the profession’s national organization – see AIPLA.org
* AIPLA will hold its 2018 Annual Meeting October 25-27, 2018 in Washington, D.C. More information on this meeting and other events is available at https://www.aipla.org/learningcenter/Pages/Upcoming-Meetings.aspx.
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.