As 2019 begins and intellectual property (IP) strategies are being developed for the new year, it is a good time to reflect on what IP issues were prominent in 2018. According to many readers, hot topics included handling IDSs and obviousness during U.S. patent prosecution, blockchain, PTAB rules, and subject matter eligibility under Section 101.
Here are 2018’s top 5 most popular Mintz blog posts:
1. Information Disclosure Statements: When and How to File? - This article explores when and how to file IDSs in satisfying the duty to disclose “material” information to the U.S. Patent and Trademark Office (USPTO), as well as common mistakes to avoid in IDS filings.
2. Overcoming Obviousness Rejections: Arguing Changes to Fundamental Principle of Operation - This article discusses how it can be difficult to overcome obviousness rejections by arguing that two or more cited references cannot be combined, as highlighted by the Federal Circuit decision in University of Maryland v. Presens.
3. USPTO Proposes Claim Construction Rule Change from BRI to Phillips in AIA Review Proceedings - The USPTO announced a propose change to the standard for construing both unexpired and amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act (AIA). The change would replace the current Broadest Reasonable Interpretation (BRI) standard with the standard articulated in Phillips v. AWH Corp.
4. What is blockchain and how will it affect me? - It is likely that blockchain technology will eventually touch almost every aspect of your life.
5. Berkheimer v. HP Inc.: Whether Claim Elements Are Well-Known, Routine, or Conventional Is a Question of Fact - The Court of Appeals for the Federal Circuit ruled in Berkheimer v. HP Inc. that it was wrong for a judge to rule that a patent was subject matter ineligible under the Alice standard because there were underlying factual disputes that could not be resolved on summary judgment.