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

IPWatchdoga patent law blog.

  • On October 27, 2019, a post by N. Scott Pierce explained a position that focusing on utility is key to establishing patent eligibility under Section 101for claiming diagnostic tools. (Details here.)

Patently-O – a blog written by Dennis Crouch.

  • In a November 5, 2019 post, Professor Dennis Crouch discussed In re Fought, 2019-1127 (Fed. Cir., Nov. 5, 2019) (PDF here.)relating to claim construction as it applies to claim preambles. Here, the applicant wrote the claim in a non-traditional manner that lacked a transition phrase (e.g., “comprising”). The court found that despite the lack of transitional language, the use of the term “having” performed the same role in this situation as “comprising.” (Details here.)
  • In his November 7, 2019 post, Professor Dennis Crouch discusses determining whether a library holding was “meaningfully indexed” to become citable prior art as considered recently by the Federal Circuit in, Telefonaktiebolaget LM Ericsson v. TCL Corp., 2017-2381, 2017-2385 (Fed. Cir. Nov. 7, 2019). (PDF here). (Details here.)

Spicy-IP – one of India’s leading blogs on intellectual property.

  • On November 20, 2019, a guest post by Abhilasha Nautiyal discussed an Indian case wherein amendments in a U.S. patent application were claimed to provide prosecution history estoppel for a corresponding Indian patent application. (Details 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