This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues.
Patently-O – a blog written by Dennis Crouch – www.patentlyo.com.
- On March 25, 2020, Professor Crouch discussed the combination of the transitional phrase “consisting of” and a claim limitation “optionally.” The issue was involved in Galderma Labs., L.P. v. Amneal Pharms. LLC, No. 2019-1021, (Fed. Cir., March 25, 2020) (PDF) (Details).
- On March 26, 2020, Professor Crouch discussed the consequences in claim construction from “a single inartful statement in the prosecution history.” In the case at Genentech, Inc. v. Iancu, 2019-1263, 2019-1267, (Fed. Cir., Mar. 26, 2020) (PDF), the patentee’s preferred claim construction was not applied because a claim term was not defined in the specification, such that a comment in the prosecution history confined the term to another connotation. (Details).
The United States Patent and Trademark Office – The U.S. agency for patents and trademark registrations – uspto.gov
- On March 16, 2020, the USPTO offered relief to patent and trademark applicants, patentees, and trademark owners affected by the coronavirus outbreak. Certain petition fees are waived, but no extensions of dates or waivers of requirements set by statute are available. (PDF)
- All in-person meetings, interviews, and oral hearings scheduled to be held at USPTO offices will now be conducted remotely by video or telephone, until further notice. Parties will receive further instructions in advance of the interview, hearing, or meeting. https://www.uspto.gov/coronavirus.
- On March 19, 2020, the USPTO waived any requirements for original handwritten signatures due to the COVID-19 outbreak. (PDF).
- On March 31, 2020, the USPTO provided a 30-day extension for some deadlines and fees due to the COFID-19 Pandemic, for the time period between March 27, 2020, through April 30, 2020. This extension does not cover original filing deadlines, PCT deadlines, national stage filing deadlines, deadlines for filing a non-provisional application following a provisional application; or a deadline for filing an inter parts review petition. (PDF)
- The USPTO provides FAQs for patent time extensions (Details) and trademark time extensions (Details)
- One may keep apprised as to the status of USPTO events, cancellations, and postponements, at https://www.uspto.gov/about-us/events.
AIPLA – the profession’s national organization – see AIPLA.org
- AIPLA previously planned to hold its 2020 Spring Meeting on May 6-8, 2020 in San Antonio, Texas. Now, the event will be held online, May 4, May 15, 2020. More information on this meeting and other events is available at https://www.aipla.org/SM20.
The Chisum Patent Academy will hold one seminar in 2020, in Boston, Massachusetts on October 1-2, 2020. More information available 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 patent prosecution or litigation questions, contact Fred Douglas at 949/293-0442 or by email at