This column highlights some of the more notable recent internet notices, newsletters and blogs dealing with IP prosecution issues.

Hal Wegner’s email newsletter – a lot of great stuff – Contact:
Hal’s blog is now available at

  • On March 26, 2013 Hal discussed In re Owens, _ F.3d _, 12-1261 (Fed. Cir., March 26, 2013) wherein the court affirmed a rejection in a design patent application because “boundary lines” did not meet the written description test of “possession.”
  • On April 1, 2013 Hal took issue with the New York Times applying a “Peanut Butter and Jelly” patentability standard.

IPWatchdog – a patents and patent law blog –

  • The March 14, 2013 post discusses In re Jeffrey Hubbell, wherein an inventor changing jobs created a double patenting problem.
  • The April 1, 2013 post states that “Costco Attempts to Defend Sales of Counterfeit TIFFANY Diamonds” relating to a Feb. 15, 2013 complaint filed in the Southern District of New York.

Patent Docs – A patent blog –

  • The March 18, 2013 post indicates that the USPTO has extended the comment period regarding potential practices that applicants can employ in drafting patent applications to facilitate examination and bring more certainty to the scope of issued patents. The new deadline for comments is April 15, 2013.
  • On April 1, 2013 Kevin Noonan discusses the U.S. Supreme Court oral arguments in FTC v. Actavis.

Spicy IP – An IP blog focusing on India –

  • On March 10, 2013 a post discussed a recent study by Jonathan Band and Jonathan Gerafi, titled “Foreign Ownership of Firms in IP-Intensive Industries,” questioning whether U.S. firms do not dominate the intellectual property market.
  • The guest post on March 30, 2013 discussed the recent U.S. Supreme Court “arguments on the legality of reverse payment settlements in the pharmaceutical sector, where a patent holder would pay a generic pharmaceutical manufacturer to delay or withdraw any challenges to patent validity.”

Patently-O – a blog written by Dennis Crouch –

  • The March 5, 2013 post discussed Move, Inc. v. Real Estate Alliance, 2012-1342, (Fed. Cir., March 4, 2013) regarding joint and divided infringement.
  • The March 15, 2013 post announced that the Federal Circuit will rehear en banc Lighting Ballast v. Philips Electronics to reconsider de novo review of claim constructions by district courts.
  • On March 18, 2013 Professor Crouch explained the USPTO fee changes effective on March 19, 2013.
  • A March 19, 2013 post discusses the U.S. Supreme Court’s recent ruling in Kirtsaeng v. John Wiley & Sons, 568 U.S. __ (March 19, 2013) on foreign first-sale exhaustion for copyrighted works and how that case’s reasoning is related to patent first-sale exhaustion issues.

USPTO – the PTO’s website –

  • On March 26, 2013 the USPTO issued, via the Official Gazette, guidelines to implement the first inventor to file provisions of the Leahy-Smith America Invents Act.
  • In the April 2, 2013 Official Gazette, the USPTO issued notices on the Patent Prosecution Highway Programs with China and the Philippines.
  • On April 3, 2013 notice emailed from the USPTO, the office announced the Federal Register revised rules on representation of others before the USPTO. The rules take effect on May 3, 2013.

AIPLA – the profession’s national organization – see

  • AIPLA’s Spring Meeting is May 1-3, 2013 in Seattle, Washington.


  • The next Chisum Patent Academy sessions are in Seattle on July 31 – August 2, 2013 and August 5-7, 2013.

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