This column highlights some of the more notable recent internet notices, newsletters and blogs dealing with IP prosecution issues.
Patently-O – a blog written by Dennis Crouch –

  • In the December 9, 2015 post, Professor Crouch discussed Prolitec, Inc. v. Scentair Technologies, App. No. 15-1020, slip opinion (Fed. Cir., Dec. 4, 2015)
    (PDF here) which affirmed an inter partes review (IPR) decision cancelling claims. The discussion touched upon specification drafting using the term “may” as a non-definite and non-limiting term. The post also discussed the Federal Circuit’s approval of the requirement to prove patentability before amending claims in an IPR proceeding. Details here.
  • On February 5, 2016 Professor Crouch discussed TriReme Medical, LLC v. AngioScore, Inc., 2015-1504 (Fed. Cir. 2016) (PDF here) regarding an inventorship dispute wherein a consultant started work informally before signing an agreement. One solution to avoid such a situation is to “add an ex post assignment of any pre-agreement innovations stemming from the informal work.” Details here.

IPWatchdog –

  • The December 4, 2015 post discusses Inphi Corp. v. Netlist Inc., No. 2015—1179 U.S. App. LEXIS 19746 (Fed. Cir., Nov. 13, 2015) Read full post here, regarding the ruling that negative claim limitations not having a higher written description standard such that optional features may be excluded from claims. Read full post here
  • The December 14, 2015 post by James Cosgrove analyzes data for the most likely art units for patent eligibility rejections (i.e., Alice rejections). The most likely art unit is 3600 for e-commerce; 2900 has no such rejections; and other art units are mentioned. Details here.
  • In a February 6, 2016 post Gene Quinn explains why best mode disclosure is still required after the America Invents Act (AIA). Details here.

USPTO – the PTO’s website–

  • In the January 19, 2016 Official Gazette the USPTO announced that the Extended Missing Parts Pilot Program is now extended through December 31, 2016. The program allows a 12-month extension for paying the search fee, examination fee, excess claim fees, and the surcharge under certain conditions. Details here

Patent Docs – A patent blog –

  • The January 12, 2016 post discusses Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (Mass., Dec. 23, 2015) (CASE HERE) which found no per se ethical violation when attorneys in different offices of the same law firm simultaneously represent business competitors in prosecuting patent applications for similar inventions, without informing the clients. The Massachusetts Supreme Court warned that “Nothing we say here today, however, should be construed to absolve law firms from the obligation to implement robust processes that will detect potential conflicts.” Needless to say, California and other jurisdictions may hold differently. Details here

AIPLA – the profession’s national organization–

  • AIPLA will hold its Spring Meeting May 18-20, 2016 in Minneapolis, Minnesota. For more information click here.

Miscellaneous –

  • The Chisum Patent Academy holds an upcoming patent law seminar in Cincinnati, Ohio on March 10-11, 2016 Cincinnati, Ohio in March 2016. seminars/advanced-patent-law-seminars-cincinnati-oh/). The seminar explores blockbuster Supreme Court and Federal Circuit patent decisions of 2014-2015 and considers responsive strategies. The round table format is intended for experienced practitioners (litigators and patent prosecutors) and is limited to 10 participants. Other seminars are scheduled in Seattle, Washington on August 4-5, 2016 and August 8-9, 2016. There are a possible 18 CLE credits for these seminars.  More info here.

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 litigation questions, contact Fred Douglas at 949/293-0442 or by email at