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 September 13, 2016 guest post, Professors Arti Rai and Coleen Chien discussed the PTO’s efforts to address issues of patent quality. (Details here.)
- In the September 13, 2016 post, Professor Crouch discussed still pending pre-GATT patent applications (filed before June 7, 1995). The pre-GATT applications are entitled tob terms of 17 years from issue. There seem to be only 20 such currently pending pre-GATT applications except for over 400 pending applications by one person, who is fighting multiple lawsuits against the government over the applications. Details here.
- On September 20, 2016 Professor Crouch discusses inherent disclosure in a priority document and how it is sufficient to satisfy the written description requirement, as mentioned in Yeda Research v. Abbott, 2015-1662, 2015-1663 (Fed. Cir., Sep. 20, 2016)(PDF here.) regarding the importance of expressly contemplating alternative embodiments in a patent application specification. (Details here.)
- On September 6, 2016, the USPTO issued a notice in the Official Gazette regarding changes in the Accelerated Examination (AE) program. The PTO noticed that the Track 1 program for accelerated prosecution is far more popular than the AE program. To seek the public’s help in improving the AE program, the USPTO will seek public comments regarding the AE program and recent changes to address changes in the law from AIA and the Patent Law Treaty. To date, no deadline for comments has been set. More information is available here.
- In a September 13, 2016 USPTO “Patent Alert” email a new authentication option for EFS-Web and Private PAIR was announced to be available in October 2016. This appears to be a fix for the previous incompatibility with certain browsers. The new authentication method is called “Java Web Start.” You have the option of switching to this new authentication method. For feedback or questions, you can email
eMod@uspto.gov or visit the eMod site here. Information regarding the USPTO’s EFS-Web may be found HERE. Information regarding changes to deposit account access and the New USPTO Payment System is available HERE.
- In the September 27, 2016 Official Gazette the USPTO requested comments on the Extended Missing Parts Pilot Program. The program allows an applicant to request a 12-month time period to pay the search fee, examination fee, excess claim fees, and surcharge in a non-provisional application. The program currently expires on December 31, 2016. The comment deadline is November 7, 2016. DETAILS HERE.
Patent Practitioner Ethics –
- The Chisum Patent Academy holds upcoming patent law seminars in Cincinnati, Ohio on March 9-10, 2017 and in Seattle, Washington on August 10-11, 2017 and August 14-15, 2017 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 email@example.com.