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 – www.patentlyo.com .

  • In the July 18, 2016 post, Professor Crouch presented data in a chart and discussed the portion of total pending patent applications falling under AIA. So far, the majority of applications fall under the old, pre-AIA rules. (Details here.)
  • In the July 28, 2016 post, Professor Crouch reviewed statistics regarding inter partes review published by the Patent Trial and Appeal Board (PTAB). Details here.Professor Crouch provides some clarity regarding the trends evident in the data and confusingly stated in the PTAB narratives. Details here.
  • On August 2, 2016 Professor Crouch discusses the disadvantages stemming from PTO delays in publishing patent applications after the lodestar 18-month publication date. (Details here.)
  • On August 13, 2016 Professor Crouch explored the question as to whether the PTO should permit amendments in inter partes review proceedings. (Details here.)
  • On August 15, 2016 Professor Crouch discussed ScriptPro v. Innovation Associates, 2015-1565 (Fed. Cir., Aug. 15, 2016) (PDF here.) regarding the importance of expressly contemplating alternative embodiments in a patent application specification. (Details here.)

The IP Law Blog – a blog providing counsel a forum to discuss IP strategies.

  • A July 22, 2016 post discusses developments in the case law regarding defense of induced patent infringement claims click here.

IPWatchdog – a patents and patent law blog.

  • In the July 12, 2016 post, Gene Quinn critiques the USPTO’s new Post-Prosecution Pilot Program (“P3”). (Details here).
  • A post by Joseph Robinson and Robert Schaffer on July 15, 2016 discussed The Medicines Co. v. Hospira, Inc., 2014-1469, 2014-1504 (Fed. Cir., July 11, 2016) (PDF here) and its finding that no “on sale” bar arises from a manufacturing agreement without an actual sale of the claimed invention. (Details here.)
  • Gene Quinn’s post on July 25, 2016 provides commentary on the “Anatomy of a Bogus Alice Rejection.” (Details here).
  • The August 5, 2016 post by Joseph Robinson and Robert Schaffer discusses Advanced Ground Info. Sys. v. Life360, Inc., 2015-1732 (Fed. Cir., July 28, 2016) (PDF here.) and its finding that a software means-plus-function claim was indefinite for failure to disclose an algorithm (Details here.)

USPTO – the PTO’s website.

  • On June 16, 2016 the USPTO posted on YouTube a video on how to schedule an interview with a patent examiner. The video linked here, describes the USPTO’s online Automated Interview Request (AIR) form to schedule an interview. Interviews can be scheduled to be held online, over the phone, or in person. The AIR form is found here. More information is available here.
  • On July 31, 20176 the USPTO issued an updated version of the “Certificate of Mailing and Transmission under 36 CFR 1.8” form (PTO/SB/92) which may be used as a certificate of mailing, certificate of facsimile transmission, or certificate of EFS-Web transmission. The new form is located here. The USPTO has retired the old form, PTO/SB/97.
  • On August 2, 2016 the USPTO issued a “Request for Comment” in the Official Gazette regarding the Post-Prosecution Pilot Program (“P3”). This program allows a utility patent applicant to submit a proposed after final amendment to be considered by a panel of examiners, along with a presentation to the examiners (in-person or by telephone). The P3 program runs until January 12, 2017, and each technology center will accept no more than 200 program requests. More information maybe found in the Federal Register Notice PDF here and at the USPTO Director’s Blog. Written comments must be received by November 14, 2016. (http://www.uspto.gov/web/offices/com/sol/og/2016/week31/TOC.htm#ref13).

Patent Docs – A patent blog – patendocs.typepad.com/patent_docs –

  • The July 18, 2016 entry discusses the July 14, 2016 Memorandum issued by the USPTO on Section 101 Subject Matter Eligibility (PDF here.). The “take home message” from the memorandum is that recent Federal Circuit opinions have not changed the USPTO’s subject matter eligibility framework and “the USPTO’s current subject matter eligibility guidance and training examples are consistent with these cases.” Details here.
  • The July 18, 2016 entry discusses the July 14, 2016 Memorandum issued by the USPTO on Section 101 Subject Matter Eligibility (PDF here.). The “take home message” from the memorandum is that recent Federal Circuit opinions have not changed the USPTO’s subject matter eligibility framework and “the USPTO’s current subject matter eligibility guidance and training examples are consistent with these cases.” Details here.
  • The July 20, 2016 post by Joseph Herndon discusses the June 28, 2016 ruling in HP Inc. v. Big Baboon, Inc., Case CBM2016-00020 (PTAB) PDF here. The PTAB denied HP’s petition for covered business method (CBM) review based on allegations that Big Baboon’s patent No. 6,343,275 was invalid under Section 101 as being directed to an abstract economic concept. Details here.

Miscellaneous –

  • The Chisum Patent Academy holds two upcoming patent law seminars in Washington, D.C. on September 29-30 and October 3-4, 2016 respectively (two identical seminars).
    There are a possible 18 CLE credits for these seminars. Each seminar is limited to ten attendees. 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 fdouglas@cox.net.