Posts in Patent Prosecution


CAFC upholds invalidation of patent application covering patient data management tech under Alice

On Monday, March 13th, the U.S. Court of Appeals for the Federal Circuit issued a decision upholding the Patent Trial and Appeal Board’s (PTAB) finding …
By Steve Brachmann
2 days ago 22

Federal Circuit: Disclaimer based on arguments actually made, not those that could have been made

The scope of surrender is not limited to what is necessary to overcome the prior art reference. Instead, patentees may surrender more than is required to overcome …

§ 101 Rejections in the Post-Alice Era

The § 101 rejection rate for patent applications in the e-commerce work groups approaches 100%, then drops precipitously for the remaining seven of the top ten work groups with the …
By James Cosgrove
18 days ago 3

China relaxing barriers to software, business method patents with revised patent guidelines

Guidelines, set to go into effect on April 1st in China, continue to leave the window open for software and business method patents. For software patents, patent …
By Steve Brachmann
22 days ago 5

Doc’s Orders: Analogize to Overcome Patent Eligibility Rejections

Taking a hint from what has worked before can give patent prosecutors an advantage. The question is then how to find such examples for use in forming …
By Andrew Gabriel
1 month ago 2

Patent Prosecution 101: Understanding Patent Examiner Rejections

Unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the …
By Gene Quinn
1 month ago 24

Examining Examiners: The Top and Bottom 10 of TC 2800

From all cases filed in the last 10 years, we filtered for all final dispositions in all of 2015 and 2016. Taking this data, we examine TC-2800 at three levels …
By Ed Flinchem
2 months ago 15

A Pre-Appeal Brief Conference is a Winning Strategy, Even if it Probably Won’t Lead to Allowance

After several articles and webinars discussing appeals outcomes at the USPTO, we have received numerous requests for Pre-Appeal Brief Conference data to explain how advantageous the program …

Could or should the USPTO adopt the EPO problem-and-solution approach for assessing obviousness?

There is a plausible case that the US law on obviousness is indeed compatible with the EPO problem-and-solution approach. It could even be said that the steps …
By Brian Cronin
2 months ago 13

PPH at the USPTO: Following the Patent Prosecution Highway for a Smooth Ride

If you qualify for participation in the PPH it makes great sense to attempt to get into the program. Not only will your application move from wherever …
By Gene Quinn
3 months ago 0

Revised Chinese patent guidelines mean better prospects for software, business methods than U.S.

In late October, China’s State Intellectual Property Office (SIPO) released a set of guidelines for Chinese patent examiners that revises the last guidelines put in place …
By Steve Brachmann
3 months ago 23

An Examiner’s Tips For Speedier Patent Prosecution

Interactions between patent examiners and patent practitioners are often tense. At worst, these interactions can be an exercise in restraint with both parties thinly veiling their disdain …
By Lauren Anderson & Ryan Cagle
3 months ago 33

Videos as a Printed Publication in Inter Partes Review

In a handful of IPRs, the Petitioner has relied on a video, and asserted that the video constitutes a printed publication... One factor raised in these cases …
By Michael K. O’Neill
4 months ago 1

Federal Circuit’s En Banc Review in Aqua Products Could Upend PTAB Amendment Practice

On December 9, 2016, the en banc Federal Circuit will hear argument in In re Aqua Products, Inc. on an issue that has long been troubling patent owners involved …
By Paul Margulies
4 months ago 4

A STEPP In the Right Direction: A review of the PTO Stakeholder Training on Examination and Practice and Procedure (STEPP)

Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in …
By William E Nowakowski
4 months ago 1