Posts Tagged ‘IP law tools’

Due May 24 — Comments On Improving Patent Quality Metrics

Monday, May 23rd, 2016

iStock_000072606049_SmallMany patent attorneys received a notice recently, copied below, alerting them to efforts by the US Patent Office to improve patent quality.

The notice references a “Master Review Form”. A preliminary version can be found at:

Not only does this Form serve as a “checklist” for how examiners are supposed to process your application, it provides an indication of how prosecution will be graded by the Office.

Once the Form is finalized, you can use it to fortify your responses, so that when you find something missing in an Office Action, you can explicitly point out how the Examiner has failed to properly address certain aspects of the rejection.

If you are able to promote the missing content as a significant deficiency, noted as such in bold type in the response, and using the same words that are on the Form, you might just get a second chance at allowance.

Takeaways From Chisum Patent Academy March 2016 Seminar

Thursday, March 17th, 2016

Takeaways from Our March 2016 Cincinnati Seminar

By Donald S. Chisum and Janice M. Mueller

Copyright 2016 Chisum Patent Academy, Inc.

On Marcchisum march 2016h 10-11, 2016 the Chisum Patent Academy held a small-group seminar at the 21C Museum Hotel in Cincinnati, Ohio to discuss and debate current developments in U.S. patent law. Our theme was “Obviousness in the Time of IPR.” The roundtable seminar group was limited to ten persons; treatise authors and educators Donald Chisum and Janice Mueller led each of four discussion sessions. Our Cincinnati participants were experienced patent litigators and prosecutors from law firms and corporations in Cincinnati, Cleveland, Minneapolis, New York City, and Pittsburgh.

Here’s a recap of our takeaways from the Cincinnati seminar:

TakeAways CIN 2016 Seminar 031716

Patent Law Developments 2015: A Quick Recapitulation

Tuesday, January 5th, 2016

iStock_000075593843_SmallThis is a guest post from Chisum Patent Academy.

Patent Law Developments 2015: A Quick Recapitulation
Donald S. Chisum
Co-Founder, Chisum Patent Academy

In terms of case law, legislation and other developments in patent law, calendar year 2015 had no first order block buster comparable to the Supreme Court’s 2014 Alice decision on patentable subject matter pertaining to computer implemented inventions or Congress’ 2011 enactment of the America Invents Act. Nevertheless, there were important decisions by both the Supreme Court and the Court of Appeals for the Federal Circuit that commanded the attention of every patent professional.

In terms of volume of case precedents by the Supreme Court and the Federal Circuit, 2015 equaled 2014 as the busiest years ever, each year having about 140 precedential decisions. Below [attached] is a quick review of the most significant of those precedents.

PatentLawYearinReview2015_DSChisum_rev4Jan2016 (1)

Top Patent Law Stories In 2015

Wednesday, December 30th, 2015

iStock_000077488719_SmallI will try to keep this post as brief as possible, since I posted at length on all of the stories. There was a lot of IP action in 2015 – much involving the Fed. Cir. and Supreme Court’s resolution of cases in progress in 2014. In no particular order, I pick:

1.  Ariosa v Sequenom. This Fed. Cir. decision that a method for isolating “cffDNA” from maternal blood is no more than a natural phenomenon was a big step backwards for the development of patent law in the area of “precision medicine” and clouds the future patent-eligibility of both natural products and methods of diagnosis and treatment. It is a pick to click with the Supreme Court. (There was also a PTO “July 2015 Update” of the December 2014 s. 101 Guidelines that really did not clarify anything.)

2.  Biosimilars Hit the Shelves. In April, the FDA finalized its biosimilars guidance and Sandoz soon launched the first biosimilar, a generic version of Neuprogen.

3.  Nautilus v Biosig. The Supreme Court redefined the “indefiniteness standard” of s. 112(2) so that a claim term must be reasonably certain to the POSA, not simply amenable to construction. In Dow v. Nova, this new standard compelled invalidation of the claims-in-suit. (more…)