Five Most Popular Prosecution First Blog Posts from 2018

With 2019 in full swing, we are looking back!  We culminated our five most popular posts from 2018 on Finnegan’s Prosecution First blog. 

1. Berkheimer Memorandum: A Big Shift, in Fact: Our top post for 2018 was unsurprisingly directed to subject matter eligibility.  Here, this post discusses the USPTO’s April 19^th memo on Step 2B of the Mayo/Alice test as applied by the Federal Circuit’s opinion in Berkheimer v. HP. 
   
   
2. The MPEP Now Incorporates – and Expands Upon – § 101 Guidance: Our second top post details the USPTO’s implementation of the Section 101 framework into the MPEP. 
   
   
3. ODP: Cracks in the Armor? An Alert regarding the pending Breckenridge and Ezra Federal Circuit Appeals: Next up, in third place, this post discusses two cases from the Federal Circuit on obvious-type double patenting, i.e., Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical and Novartis AG v. Ezra Ventures LLC.
   
   
4. Claim Construction: The Never-Ending War of Words: In fourth place, this post explains the Federal Circuit decision of Blackbird Tech LLC v. ELB Electronics, Inc., 2018 WL 3421094 (Fed. Cir. 2018). If a limitation is described in the Summary of Invention section of the specification, it is not, per Blackbird, automatically read into the claims.
   
   
5. Error 101: Director Iancu Wants to Clarify Patentable Subject Matter: Rounding out the top five, this post addresses Direct Iancu’s comments delivered at the Intellectual Property Owners Association annual meeting on September 24, 2018.

We look forward to another year of posting and providing news and information about all aspects of U.S. patent prosecution.