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 26, 2016 post, he explains his position that an inventor need not know why an invention works to obtain a valid patent. Details here.
  • On November 7, 2016 Hal provided his paper, The 800 Pound Faux Stare Decisis Gorilla in the Room Of Patent Eligibility, which critically reviews the stare decisis argument in Bilski.Details here. That paper is available here.
  • Hal discusses shortcomings at the USPTO regarding domestic implementation of First-To-File as compared to foreign priority and foreign applicants in his November 10, 2016 post. Details here.

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

  • In the October 27, 2016 post, Professor Crouch discusses ProFoot v. Merck & Co., 2016-1216 (Fed. Cir., Oct. 26, 2016) (PDF details here) wherein the court imported structural limitations from the specification although functionally claimed. This decision may leave a trap for patent practitioners hoping for implicitly broad claims. Details here.

USPTO – the PTO’s website.

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 26, 2016, Andrew Williams discussed the USPTO’s proposed rule amendment to recognize the patent practitioner-client privilege before the PTAB. Details here. The Federal Register Notice is here. The comment period ends on December 19, 2016.

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