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

  • Inherency in the Written Description – On September 21, 2023, Professor Dennis Crouch discussed inherency as it relates to the written description requirement. The referenced case, Novartis Pharms Corp. v. Accord Healthcare, Inc., slip opinion, 2021-1070 (Fed. Cir., June 21, 2022) (PDF here.), which was refused en banc rehearing in September 2022, held that the written description must either expressly or inherently disclose the invention. The fact pattern involved is related to a negative claim limitation. Details here.

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

  • Potential Changes to Qualifications to Practice Before the USPTO – The USPTO seems interested in making it easier to qualify to represent clients before the USPTO for patent prosecution and in IPR proceedings at the PTAB. One proposal is to allow non-scientifically trained persons to become registered patent practitioners for design patents. The USPTO is also interested in relaxing the educational requirements for patent attorneys and patent agents. The USPTO is soliciting input. More information is available at the relevant Federal Register Notices, Expanding Admission Criteria for Registration To Practice in Patent Cases Before the United States Patent and Trademark Office  (Details here.) and Expanding Opportunities To Appear Before the Patent Trial and Appeal Board  (Details here).
  •  New Public Patent Search Tool – On September 30, the United States Patent and Trademark Office’s (USPTO) new Patent Public Search tool (PPUBS) replaced four legacy tools—Public-Examiner’s Automated Search Tool (PubEAST), Public-Web-based Examiner’s Search Tool (PubWEST), Patent Full-Text and Image Database (PatFT), and Patent Application Full-Text and Image Database (AppFT). Existing links to U.S. patents and U.S. pre-grant publications in PatFT and AppFT terminate following the retirement of these services. Details here.

AIPLA – the profession’s national organization – see AIPLA.org

  • AIPLA’s Mid-Winter Institute will be held on January 31 to February 3, 2023; the 2023 Spring Meeting on May 10 to 13, 2023; and AIPLA 2023 Annual Meeting from October 19 to 21, 2023. More information is available at https://www.aipla.org/events.
  • The Chisum Patent Academy scheduled to hold one seminar in 2020, Boston, Massachusetts on October 1-2, 2020. Instead, the Boston seminar was then scheduled for a time in 2021, due to you-know-what. Well, that didn’t happen. Maybe 2023? For now, the landing page states, “Due to the Covid-19 pandemic, the Chisum Patent Academy has postponed its live seminars.” Check the website for updates and more information at https://chisum-patent-academy.com/.

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 fdouglas@cox.net.