Posts in Patent Prosecution


Crossing the Chasm: Avoiding and Surviving the PTAB

In 2012, the American Invents Act established three new administrative procedures: post grant review (PGR), inter-partes review (IPR), and covered business method patent (CBM) review. In each of …

Ignorance of the Law is No Excuse for Cost of the USPTO’s High ex parte Appeal Reversal Rates

As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply …
By Adam Stephenson
16 days ago 8

Challenges for Managing Chinese Patent Prosecution: Anything More Than Lost in Translation?

If you are an in-house counsel at a U.S. technology company, managing its global patent portfolio with a potentially significant exposure in China, you face some …
By Liaoteng Wang
29 days ago 4

Testing a Patent Claim against an Abstract Idea, in Response to 35 USC §101 Rejection

One promising approach is to argue that the claims are directed to a specific technological solution to a specific technological problem, as has been successful in the …
By Christopher Hall
1 month ago 8

‘Patent Prosecutor’ or ‘IP Counselor’?: Clients and Practitioners Should Choose Wisely

In sum, patent prosecutors who operate principally as IP counselors best position themselves to make a greater impact on their clients and build a more profitable, sustainable …
By Carlo Cotrone
2 months ago 5

Patent Quality Metrics: Finding Reliable Metrics Linked to Patent Value

We need to ask ourselves: what are the defining features of a “filler patent”? At least two things stand out. First, “filler patents” go through more rounds …

Judge Michel tells Congress it isn’t helpful to talk about quality, patents are either valid or invalid

“I think at the end of the day, patents are either valid or invalid as a legal instrument and therefore it’s not very helpful to talk …
By Steve Brachmann
2 months ago 6

Federal Circuit declares Regeneron patent unenforceable due to inequitable conduct

The Federal Circuit issued a decision in Regeneron Pharmaceuticals, Inc. v. Merus N.V. upholding the determination that the patent owned by biotech firm Regeneron was unenforceable. …
By Steve Brachmann & Gene Quinn
2 months ago 0

Global IP Trends Indicator underscores increasing globalization in patent filing strategies

Among the key findings of the report include the more than 73 percent of respondents filed patents in four or more countries during last year. That was up …
By Steve Brachmann
2 months ago 0

House IP Subcommittee holds yet another one-sided hearing on bad patents and patent trolls

House IP subcommittee chair Rep. Darrell Issa (R-CA) led off the hearing by discussing the large number of interests who are often on Capitol Hill to discuss …
By Steve Brachmann
2 months ago 29

A section-by-section look at the STRONGER Patents Act introduced in the Senate

In late June, the Support Technology and Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patents Act of 2017 was introduced into the U.S. Senate …
By Steve Brachmann
3 months ago 8

Are more than 90 percent of patents challenged at the PTAB defective?

At least 84 percent of patents reaching a final written decision in a PTAB validity challenge are adjudicated to have at least one invalid claim (usually many more …
By Steve Brachmann & Gene Quinn
3 months ago 85

Is there a Tide-Change in the Prospects of Patenting Business Method Innovations?

In the years after the Alice decision, it had seemed as though examiners in the business method art units felt as though their hands were tied with …
By Kate Gaudry
4 months ago 8

Review of USPTO should start at the top, not with examiners

In an article published on April 23, 2017, Gene Quinn wrote about President Trump’s workforce reduction plan and his proposal for what it should mean for the United …
By Sue D. Nym
5 months ago 8

§ 112 Rejections: Where They Are Found and How Applicants Handle Them

In this article, we will explore both § 112(a) and § 112(b) rejections by taking a look at where they are most common, how applicants respond to them, and …
By James Cosgrove
5 months ago 0