Posts Tagged: patent examiners


Could Have, Should Have, Would Have

It is irresponsible for adults to give children who fail to complete their work credit based on the excuse that the children could have, should have, would …
By David Wanetick
1 month ago 35

Investing in Inventing: A Patent Process Primer for Startups

The patent process is long and complex, but well worth the effort if it means protecting your invention and your new company. Key decisions made along the …
By Trevor Day & Neil Ferraro
2 months ago 7

Berkheimer, the Administrative Procedure Act, and PTO Motions to Vacate PTAB § 101 Decisions

After several years in which the U.S. Patent and Trademark Office (PTO) did not seem to have an official position on the issue, and many Patent …
By Jeremy Doerre & David Boundy
3 months ago 20

CAFC Vacates Board for Moving Target Rejections, Failure to Consider Reply Brief

The moving target rejections were largely due to the fact that the examiner's first clear explanation that she was relying on structural identity, and not inherency, appeared …

Predicting Future Patent Outcomes

In this article, I compute a “three-year grant rate” that shows the probability of obtaining a granted patent within three years of the first office action. This …
By Jeff O’Neill
5 months ago 15

USPTO memo explains changed Alice Step 2B to examiners

Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the …
By John M. Rogitz
6 months ago 3

Innovative Use of Patent Examiner Statistics Improves Efficiency and Strengthens Portfolios

We recently handled an application in which the examiner rejected the independent claims as obvious in view of six references from a variety of different fields. Submitting …
By Robert Jensen
6 months ago 1

Cognitive Dissonance: How the PTAB Reported Appeal Statistics Ruins the Data for Everyone

The PTO reports a case as affirmed if all claims are rejected for at least one issue on appeal and reversed if all claims are reversed for …
By Adam Stephenson
11 months ago 2

A Revolutionary Approach to Obtaining Software Patents Without Appealing to the PTAB

Today’s environment demands an agile approach, one that involves substantial up-front planning, followed by continuously learning from both the client and the marketplace, using a strategy …

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
1 year ago 8

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 year ago 8

How to Create Patent Rights

Intellectual property is distinguished from “real property” because the property itself exists in our heads and needs to be “created” through a process of description and examination. …
By Jeremy A. Cubert
1 year ago 8

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
1 year ago 6

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
1 year ago 8

Ex Parte Appeal Oral Hearings: Making Your Case Right Before Decision Time

This data set shows that Oral Hearings are rarely conducted. (See Figure 1.) Across the 72,443 appeals, only 459 (0.63%) appeals had an Oral Hearing... As shown in Figure 4, Oral Hearings …
By Kate Gaudry & Sameer Vadera
1 year ago 1

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