This column highlights some of the more notable recent internet notices, newsletters and blogs dealing with IP prosecution issues.
Wenger’s Writings – Hal Wenger’s Blog – a lot of great stuff. – .

  • In Hal’s October 3, 2016 post, he discussed his position that the “state of the art” when filing a patent application minimizes the value of the grace period for an inventor’s pre-filing date publications. 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. His paper on the topic is here.

Patently-O – a blog written by Dennis Crouch – .

  • In the October 16, 2016 post, Professor Crouch provides a chart of utility patent grants per fiscal year. The 2016 fiscal year ended with the most utility patents issued ever, 304,500. (Details here.)
  • In an October 19, 2016 post, Professor Crouch discussed the issue of whether the Inter Partes Review (IPR) system is unconstitutional(PDF here.)

USPTO – the PTO’s website.

  • On October 3, 2016, the USPTO provided a notice of proposed rulemaking requesting public comment on proposed fee “adjustments” (i.e., increases). The deadline for comments is December 2, 2016. Details here. The proposed fee adjustments are summarized in the USPTO’s September 30, 2016 Press Release 16-16. Details here.
  • In the October 14, 2016 Press Release 16-17 the USPTO referred to a Federal Register notice Details here. “Notice of Roundtables and Request for Comments Related to Patent Subject Matter Eligibility” to announce a “nationwide conversation” on patent eligible subject matter, which is a topic of sustained attention by patent practitioners. The first roundtable will be in Alexandria, Virginia on November 14, 2016, while the second one will be at some university that uses a tree as a logo in Stanford, California on December 5, 2016. Details here.

IPWatchdog – a patents and patent law blog –

  • The September 29, 2016 post, “How NOT to Respond to an Office Action” details a memorable office action response wherein the pro-se inventor refers to the examining corps with insults filled with profane language. More info here.
  • The September 30, 2016 post discusses the opinion in Cox Communications, Inc. v. Sprint Communication Co. LP, No. 2016-1013, 2016 U.S. App. LEXIS 17372 (Fed. Cir., Sep. 23, 2016) (PDF here) which held that proper Section 112 indefinite analysis is concerned with the claim and not merely claim terms. More info here.

Patent Docs – A patent blog –

  • On October 9, 2016, Donald Zuhn discussed the USPTO’s released of its enhanced Patent Assignment Search System, with an improved layout, quick search functions, the ability to export data, and other features. 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