This column highlights some of the more notable recent online notices, newsletters, and blogs dealing with IP prosecution issues.
Patently-O – a patent law blog – Patentlyo.com
- Nonce words and Means Plus Function Claims – You usually want to avoid Section 112(f) classifications as the result is often either (1) narrow claim scope or (2) invalid claims. In his May 18, 2022 post (Details here.), Prof. Dennis Crouch goes into two recent Federal Circuit cases which build further on the Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (en banc as to Part II.C.1) case that changed the strong presumption that a claim lacking the term “means” did not fall within Section 112(f) to the rebuttable presumption that “nonce words” such as “mechanism,” “element,” and “device” fail to recite sufficiently definite structure. The two recent cases are Dyfan, LLC v. Target Corp., 28 F.4th 1360 (Fed. Cir. 2022) (PDF here.) and VDPP LLC v. Vizio, Inc., 2021-2040, 2022 WL 885771 (Fed. Cir. Mar. 25, 2022) (PDF here.).
- Typos in Prior Art and PHOSITA – In his July 11, 2022 post, Prof. Dennis Crouch discussed a case from the Federal Circuit that agreed with the patentee in holding that a person holding ordinary skill in the art (PHOSITA) would have “disregarded or corrected” an error found in a prior art document rather than relying on the error as the foundation of an inventive project. (Details here.) The opinion is LG Electronics, Inc. v. ImmerVision, Inc., slip opinion, Dkt. Nos. 2021-2037, 2021-2038 (Fed. Cir., July 11, 2022) (Fed. Cir., Jan. 24, 2022) (PDF here.)
- Boilerplate Statements in Patent Sink Eligibility – A July 18, 2022 post describes a situation wherein Stanford lost an appeal on eligibility after a finding that disputed claims covered conventional technology. The Federal Circuit bolstered this finding in CareDx, Inc. v. Natera, Inc., slip opinion, Case No. 22-1027 (Fed. Cir., July 18, 2022) (PDF here.) by noting the following admissions in the specification stating that the technology was wholly conventional:
- “The practice of the present invention employs, unless otherwise indicated, conventional techniques of immunology, biochemistry, chemistry, molecular biology, microbiology, cell biology, genomics and recombinant DNA, which are within the skill of the art.”
- The take-home lesson here is to take a new look at your boilerplate and adjust accordingly. One dilemma involves relying on such boilerplate to satisfy written description requirements while hoping to avoid obviousness rejections. (Details here.)
United States Patent and Trademark Office – The U.S. agency for patents and trademark registrations – uspto.gov
- Russia, Russia, Russia – On March 22, 2022, the USPTO announced cutting off all engagement with RosPatent (Russian intellectual property organization), the Eurasian Patent Organization, and intellectual property officed in Belarus. If one used RosPatent for the Global Patent Prosecution Highway, that is not going to happen at this time. Details here.
- On May 5, 2022, the U.S. Department of Treasury’s Office of Foreign Assets Control (OFAC) issued General License No. 31 to let you still file and prosecute patent applications, trademark registration applications, copyright registrations, and pay renewal or maintenance fees to the Russian authorities. The General License No. 31 is PDF is available here . See the USPTO announcement here.
- On June 1, 2022, the USPTO issued an update on the Rospatent situation stating that effective December 1, 2022, the USPTO is terminating the agreement that involves Rospatent functioning as an International Searching Authority (ISA) and an International Preliminary Examining Authority (IPEA) for PCT applications received by the USPTO. You can read the announcement here .
- On July 26, 2022, the USPTO issued a notice in the Official Gazette that any parties in Ukraine affected by the Russian invasion of that country may request a restart on any office action response deadlines. The Official Gazette notice is available here.
- PTO Offices Back Open – On August 16, 2022, the USPTO fully reopened all locations to employees and resumed some in-person activities. Details here.
- Duty of Candor & Duty to Disclose – On August 16, 2022, the USPTO provided in the Official Gazette a notice on what it considers the duty to disclose information to the USPTO and the reasonable inquiry requirement. The Notice took pains to make clear that these duties also apply to PTAB proceedings and that inconsistent statements made to the FDA or other government agencies, which contradict statements made to the USPTO, are improper. Details here.
AIPLA – the profession’s national organization – see AIPLA.org
- AIPLA’s 2022 Annual Meeting is scheduled for October 27-29, 2022, at the Gaylord National Resort and Convention Center in National Harbor, Maryland. More information is available here.
- The Chisum Patent Academy was scheduled to hold one seminar in 2020, in Boston, Massachusetts on October 1-2, 2020. Instead, the Boston seminar was to be scheduled for a time in 2021, due to you-know-what. Well, that didn’t happen. Maybe 2023? Check the website for updates and more information.
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 email@example.com.