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

Patently-O – a patent law blog –

  • Laches in Patent Prosecution – On January 23, 2023, a guest post by Jordan Duenckel discussed a Federal Circuit opinion, Personalized Media Communications, LLC v. Apple Inc., 57 F.4th 1346 (Fed. Cir., Jan. 20, 2023) (Click here for PDF.) regarding laches during patent prosecution. In this split decision, the Federal Circuit ruled that the lower court did not abuse its discretion in declaring a patent unenforceable based on prosecution laches. The pre-GATT applications had claims that had been prosecuted for sixteen years before being presented for prosecution. (Details here.).
  • File Before Marketing – On February 16, 2023, Professor Dennis Crouch presented the concept that public use equals “accessible to the public,” in light of Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298 (2021) and other opinions. One take-home lesson was to file a patent application before displaying the invention at a trade show. (Details here.).
  • Mechanical Inventions Using Abstract Ideas – On March 1, 2023, a guest post by Jeffrey Lefstin focused on a recent ITC decision, In The Matter of Certain Polycrystalline Diamond Compacts and Articles Containing Same, (Click here for the PDF.) finding a drill bit abstract. The drill bit properties were claimed, but not the way to achieve those properties. (Details here.).
  • Overlapping Ranges – On April 15, 2023, Chris Holman related a situation wherein overlapping ranges in claims and the prior art were the basis for the invalidation of a patent, in UCB, Inc. v. Actavis Labs. UT, Inc., 2023 WL 2904757, — 4th —  (Fed. Cir. Apr. 12, 2023) (Click here for the PDF). (Details here.).
  • Sometimes an Indefinite Article is Definitely Singular – On April 10, 2023, Professor Dennis Crouch discussed the use of the indefinite article, “a,” in patent claims, due to the finding in Salazar v. AT&T Mobility LLC, Nos. 2021-2320, 2021-2376 (Fed. Cir., Apr. 5, 2023) (Click here for the PDF.) that in some situations, “a” must be limited to only one item, not “one or more.” While it is considered axiomatic that “a ____” is usually interpreted to include “one or more _____,” the Federal Circuit upheld the district court’s singular construction, finding the term limited by later references to “said microprocessor.” (Details here.).

Design Patent Bar – On May 15, 2023, Professor Crouch announced that the USPTO was preparing to institute a separate design patent practitioner bar. (Details here.).

United States Patent and Trademark Office – The U.S. agency for patents and trademark registrations –

  • Emailed PCT Questions – On January 17, 2023, the USPTO issued a notice that it will continue offering an email address ( for submitting general questions about PCT applications, international, and national applications, at least through January 1, 2024. The email address is not intended for case-specific or time-sensitive inquiries, but only for general inquiries. (Click here for the PDF).
  • Electronic Patent Grants – On April 4, 2023, the USPTO issued a reminder that as of April 18, 2023 they will issue patents electronically (eGrants) via Patent Center. The old-school ceremonial copies will be available for purchase through the USPTO Certified Copy Center (Details here. ). Applicants wanting to file continuing applications should take care to do so promptly before the date of issue, as the eGrant procedure will likely narrow the time between paying the issue fee and the date of issue. (Details here.).
  • Yet Another Extension of the DOCX Filing Requirement – On June 5, 2023, the USPTO announced that the date for charging the non-DOCX filing fee is extended from June 30, 2023, to the new date of January 17, 2024. Also, until further notice applicants will have the option of uploading a backup PDF version of their application with the DOCX versions. The USPTO notice said that applicants can rely on the backup PDF to verify the substance of their original filing. (Click here for the docx version.).

Patent Docs – A patent blog –

  • On April 23, 2023, Michael Borella discussed the Federal Circuit case, Sequoia Technology, LLC v. Dell, Inc., slip opinion, 2021-2263, 2021-2264, 2021-2265, 2021-2266, 2021-2267. (Fed. Cir. Apr. 12, 2023) (  to remind patent practitioners to explicitly recite in computer-readable medium (“CRM”) claims language that clearly states that the CRM is non-transitory (Details here.).

AIPLA – the profession’s national organization – see

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