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 November 20, 2015 post, Professor Crouch discussed data showing that 20% of newly issued patents are AIA (“first-inventor-to-file”) patents. Read full post 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

USPTO – the PTO’s website–

  • In a November 6, 2015 blog post by USPTO Director Michelle K. Lee, a pilot program, “Clarity of the Record Pilot,” was introduced. Examiners will enter into the prosecution history definitions of key terms, claim constructions, and more detailed reasons for allowance and rejection of claims. The blog describes the effort to issue patents that are “correct and clear.” The “Enhanced Patent Quality Initiative” is discussed HERE. The Director makes no mention of the expected response and resistance by applicants and
    patent practitioners. Now if probably the time to prepare some boilerplate along the line
    of, “Applicant respectfully disagrees with the Examiner’s statement and does not waive
    any contrary contentions that may be brought in the future.”.
  • On November 17, 2015 the USPTO issued a final rule, modifying the Application Data Sheet (ADS) form, effective November 30, 2015. The revised ADS required to opt-out
    (instead of the previous opt-in) of sharing application file contents and search results with
    foreign patent offices.The timeline may be reviewed at  here.

Patent Docs – A patent blog –

  • The November 9, 2015 post discussed the intellectual property provisions of the Trans Pacific Partnership (TPP). Details click here

AIPLA – the profession’s national organization–

  • AIPLA will hold its Mid-Winter Institute January 27-30, 2016 in La Quinta, California. To make reservations click here.

Miscellaneous –

  • The Chisum Patent Academy holds an upcoming patent law seminar in 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