Posts Tagged ‘Janice Mueller’

Takeaways from Seattle Summer 2014 Seminars

Monday, August 25th, 2014

A guest post by Donald Chisum and Janice Mueller.

In August 2014 the Chisum Patent Academy held two back-to-back seminars in its Seattle, Washington facility to discuss and debate current developments in patent law. Each roundtable seminar group was limited to ten persons; sessions were led by treatise authors and educators Donald Chisum and Janice Mueller.

Attendees included experienced patent litigators and prosecutors from law firms and corporations in the U.S., Canada, Germany, and India. Each seminar met for three days. Seattle’s great summer weather, coffee, and lively discussion were enjoyed by all.

Here’s a recap of the takeaways from the seminars:

2014 Supreme Court Decisions: Moderation? The year 2014 was an undoubtedly high water mark in terms of the number of pertinent SCOTUS patent law decisions–six directly on patent law issues plus a copyright case (Petrella) that could alter the laches defense for patent infringement claims. Commentary and initial responses, including those by the PTO, suggest that the cases represent a significant move toward constricting the availability of patent rights. Yet, in-depth discussions of the cases during our seminars detected a tone of moderation. For example, Alice has been read as broadly precluding patents on “software.” However, language in Alice strongly suggests that claims to technical advances, even broad claims that involve computer implementation, remain patent eligible. Unfortunately for patent applicants and owners, it will take time and resources to establish such eligibility through appeals from PTO rejections and summary district court invalidations.

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Chisum Patent Academy Announced 2013 Seminar Dates

Wednesday, August 22nd, 2012

This seminar series, taught by Donald Chisum, the leading authority on evolution  in patent law, and my former law clerk, Prof. Janice Mueller, explore contemporary developments in patent law in detail.  How about a session on how to respond to the new s. 101 Mayo/Myriad rejections that Examiner’s have begun to lay on us?

For more information, go to http://www.chisum-patent-academy.com/.

 

BOOK REVIEW: Janice M Mueller, Patent Law, Third Edition, Aspen Publishers (2009), 613 pages, paper.

Monday, May 11th, 2009

I thought I would take time out from my rants about the written description requirement, and patentable subject matter, to let you know about this important addition to IP education tools. In 2003, Professor Mueller, now at the University of Pittsburgh Law School, published the first edition of An Introduction to Patent Law, which was intended to fulfill a need she perceived for an introductory textbook for patent law students that was also rigorous in its analysis of the law, while being manageable in length. The first edition was a mere 398 pages, and a marvel of compression. I used it regularly and felt that, when asked a question, I could confirm or deny my “first impression” of almost any part of 35 U.S.C. with remarkable ease. The new edition has been held to 614 pages, and should be on every patent prosecutor’s shelf, in between Chisum’s (now) three volume Patent Law Digest and, if you are a chem/biotech practitioner, John L. White’s Chemical Patent Practice (a case law summary I still call “The Bible”).

Before issuing this rave review, I thought I would test out the book’s currency in four “hot’ areas of IP law – patentable subject matter, inherent anticipation, obviousness, and the written description requirement. Patent Law is up-to-date in all these areas. Bilski is discussed thoroughly, though Lab. Corps. v. Metabolite Laboratories only rates a footnote. Anticipation by Inherency gets its own subsection in the excellent discussion of section 102, as does KSR in the chapter on obviousness. I need not have worried about the treatment of section 112 issues like enablement and WDR. Professor Mueller has published extensively on WDR and there is a lengthy subsection on what she properly terms “The Written Description of the Invention Requirement.” I would have liked to have seen a bit more on how to logically resolve the “scope of claims” issue under enablement and the WDR but, as I have discussed in an earlier post, the Federal Circuit has just begun to deal with that issue.

A disclaimer is in order, Professor Mueller was “my” law clerk a generation or so back, but, as Patent Law demonstrates, she learned her lessons from me and from my elders (e.g., Judge Giles S. Rich, for whom Mueller also clerked) very well. I would like to close with a quote from her introduction to section 102:

Deceptively straightforward at first reading, when applied, the seven subsections (a) through (g) of 35 U.S.C. s. 102 may seem a rather bewildering Pandora’s box of arcane conventions and obscure terms of art…. First, here are some general recommendations for readers who seek a better understanding of the intricacies of s. 102. It is important to get comfortable with the statute. Post a copy of 35 U.S.C. s. 102 on the wall next to your desk or computer and copy its text into your laptop or PDA. Read the language over every day until you know it by heart.

I think I said something like that 20 years ago, but I can’t be sure. I know I could not have said it better.