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 April 30, 2018, Joseph Robinson and Robert Schaffer discussed James v. j2 Cloud Services, LLC, No. 2017-1506, 2018 U.S. App. LEXIS 10025 (Fed. Cir., Apr. 20, 2018) (https://www.leagle.com/decision/infco20180420137_ that indicated that a routine software development agreement does not imply a transfer of patent rights absent express language conveying an assignment. Make sure inventors execute a specific assignment for each application, I say. (http://www.ipwatchdog.com/2018/04/30/software-development-agreement-patent-rights/id=96582/).
* In a post on May 1, 2018, Joseph Robinson and Robert Schaffer discussed the Federal Circuit’s holding regarding evidence to corroborate testimony of conception. The message from Apator Miitors ApS v. Kamstrup A/S, No. 2017-1681, 2018 U.S. App. LEXIS 9674 (Fed. Cir., Apr. 17, 2018) (https://www.leagle.com/decision/infco20180417206) is unwitnessed e-mails and drawings cannot corroborate an inventor’s testimony of conception. (http://www.ipwatchdog.com/2018/05/01/unwitnessed-e-mails-and-drawings-cannot-corroborate-testimony-of-conception/id=96586/).
* On May 16, 2018, Joseph Robinson and Robert Schaffer discussed the Federal Circuit’s holding regarding written description. The General Hospital Corporation v. Sienna Biopharmaceuticals, Inc., No. 2017-1012, (Fed. Cir., May 4, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1012.Opinion.5-2-2018.1.PDF) stands for the proposition that a broad disclosure is not enough for written description support for a claimed range. (http://www.ipwatchdog.com/2018/05/16/written-description-support-claimed-range-requires-more-than-broad-disclosure/id=97169/).
Patently-O – a blog written by Dennis Crouch – www.patentlyo.com.
* In a May 3, 2018 post, Professor Dennis Crouch discussed In re VerHoef, No. 2017-1976 (Fed. Cir., May 3, 2018) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1976.Opinion.5-2-2018.1.PDF) wherein a dispute among co-inventors in a start-up company culminated in litigation wherein each respective patent application was rejected for not naming the respective co-inventor. (https://patentlyo.com/patent/2018/05/inventors-cooperate-nobody.html).
Patent Docs – A patent blog – patentdocs.typepad.com/
* On April 26, 2018, Kevin E. Noonan discussed the USPTO’s recently issued “Guidance on the Impact of SAS on AIA Trial Proceedings.” (http://patentdocs.typepad.com/files/guidance-on-the-impact-of-sas-on-aia-trial-proceedings.pdf). The USPTO issued this Guidance to state how the Patent Trial and Appeal Board (PTAB) will apply the recent Supreme Court ruling, SAS Institute Inc. v. Iancu, No. 16-969 (U.S., Apr. 24, 2018) (https://www.supremecourt.gov/opinions/17pdf/16-969_f2qg.pdf) which mandates that inter partes review decisions are “all or nothing” regarding challenged claims. (http://www.patentdocs.org/2018/04/uspto-issues-guidance-on-supreme-court-ruling-in-sas-v-iancu.html).
United States Patent and Trademark Office – www.uspto.gov
* On April 26, 2018 the USPTO issued guidance on the impact of SAS Institute Inc. v. Iancu, No. 16-969, _ U.S._ (Apr. 24, 2018) (https://www.supremecourt.gov/opinions/17pdf/16-969_f2qg.pdf) to state how the Patent Trial and Appeal Board (PTAB) will apply the recent Supreme Court ruling which mandates that inter partes review decisions are “all or nothing” regarding challenged claims. (https://www.uspto.gov/sites/default/files/documents/guidance_on_the_impact_of_sas_on_aia_trial_proceedings_%20%28april_26%2C_2018%29.pdf).
* In the May 15, 2018 Official Gazette, the USPTO issued a request for comments relating to whether a claim limitation represents a well-understood, routine, conventional activity or elements is a question of fact and how Examiners should implement such a determination. Written comments are due by August 20, 2018 (https://www.uspto.gov/web/offices/com/sol/og/2018/week20/TOC.htm#ref10).
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.