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
* Christopher Hall’s article on August 16, 2017 discusses one way to handle rejections of patent claims as falling on an abstract idea under 35 U.S.C. § 101. (http://www.ipwatchdog.com/2017/08/16/testing-patent-claim-abstract-idea-response-35-usc-%c2%a7101-rejection/id=86881/).
* Gene Quinn’s August 23, 2017 article claims that the USPTO admits stacking PTAB panels to achieve desired outcomes. (http://www.ipwatchdog.com/2017/08/23/uspto-admits-stacking-ptab-panels-achieve-desired-outcomes/id=87206/).
Wegner’s Writings – Hal Wegner’s blog – a lot of great stuff – www.laipla.net/news-blog/blog.
* On June 13, 2017 Hal discusses the Supreme Court granting certiorari in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712 on the question, “Whether inter partes review violated the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” The case will be argued during October 2017. (http://www.laipla.net/oil-states-supreme-court-challenge-to-post-grant-patent-challenges/).
* Hal’s September 13, 2017 post introduced his paper (http://www.laipla.net/wp-content/uploads/2017/09/PrimaFacieObviousnessSeptember13.pdf) regarding prima facie obviousness. (http://www.laipla.net/new-paper-prima-facie-obviousness-blind-eye-on-madison-place/).
OC Patent Lawyer – James Yang publishes a patent blog for innovators and businesses in Orange County, California – (http://ocpatentlawyer.com/).
* In the September 1, 2017 post, James Yang discusses the USPTO’s July 2017 published report, “Patent Eligible Subject Matter Report On Views And Recommendations From The Public (http://ocpatentlawyer.com/wp-content/uploads/2017/09/101-Report_FINAL.pdf). Mr. Yang explains why he thinks that this report is a good summary of the situation for especially life science and computer-related technologies. (http://ocpatentlawyer.com/uspto-report-on-patent-eligible-subject-matter/
* In a September 12, 2017 post, James Yang discussed the Federal Circuit’s opinion in Millennium Pharmaceuticals, Inc. v. Sandoz Inc. (Fed. Cir., July 17, 2017) (http://ocpatentlawyer.com/wp-content/uploads/2017/09/101-Report_FINAL.pdf) which held that obviousness is partly based on the path a person having ordinary skill in the art (PHOSITA) would have taken based on the prior art, not the path the inventor actually took. (http://ocpatentlawyer.com/obviousness-is-based-on-path-phosita-would-have-taken/).
Patent Docs – A patent blog – patentdocs.typepad.com/patent_docs
* In the August 23, 2017 post, Donald Zuhn discusses Tinnus Enterprises, LLC v. Telebrands Corp., (E.D. Tex. 2017) (http://patentdocs.typepad.com/files/report-and-recommendation-9.pdf ) in which a magistrate judge recommended granting a finding that no inequitable conduct occurred when patent applicant failed to report during prosecution that a parent patent was undergoing PTAB post-grant review. (http://www.patentdocs.org/2017/08/tinnus-enterprises-llc-v-telebrands-corp-ed-tex-2017.html).
* In the August 30, 2017 post, Kevin Noonan explains the apparent inconsistency between claim construction standards in court versus standards that the USPTO applies, along with differences applying the law of indefiniteness. (http://www.patentdocs.org/2017/08/in-re-mcaward-ptab-2017.html).
Patently-O – a blog written by Dennis Crouch – www.patentlyo.com.
* The June 8, 2017 post by David Hricik discusses a patent specification drafting service, called Specifio (https://specif.io), which allows you to submit one independent claim with unlimited dependent claims and the Specifio software prepares a specification for review before submission. The post looks at issues of privilege, confidentiality, terms of service, and other issues aside from competency and quality concerns. (https://patentlyo.com/hricik/2017/06/augmented-patent-drafting.html).
* The July 30, 2017 post by Professor Crouch discusses Regeneron Pharmaceuticals, Inc. v. Merus N.V., 2016-1346 (Fed. Cir., July 27, 2017) (http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1346.Opinion.7-24-2017.1.PDF), which found inequitable conduct based on a combination of acts performed during prosecution and litigation misconduct. (https://patentlyo.com/patent/2017/07/inequitable-prosecutionlitigation-misconduct.html).
* Professor Crouch’s September 4, 2017 post provides a chart of the pendency of recently issued patents grouped by number of references cited by the applicant during prosecution, showing a correlation of longer pendency and patents with more citations. (https://patentlyo.com/patent/2017/09/citing-references.html).
* The Chisum Patent Academy holds upcoming patent law seminars in Houston, Texas on March 5-6, 2018 and Cincinnati, Ohio on March 8-9, 2018. There will be a Seattle, Washington seminar in the fall of 2018. There are a possible 18 CLE credits for these seminars. Each seminar is limited to ten attendees. More info at https://chisum-patent-academy.com/upcoming-patent-law-seminars/.
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.