Posts Tagged: patent office


Common sense is no substitute for reasoned analysis and evidentiary support

O’Malley recognized that in Perfect Web the Federal Circuit did authorize the use of common sense to supply a missing claim limitation, but she pointed out …
By Gene Quinn
5 months ago 15

Steps the PTO must take to address low quality patent examination

While any system should always aspire to provide better quality, the patent system included, patent quality is a two way street that requires the Office to look …
By Gene Quinn
6 months ago 14

Ex Parte Appeals in the Post-Alice World

Amongst the appeals involving patent-eligibility rejections, the most recently filed appeal brief was filed in November 2015. Thus, all of the appeal briefs and most of the PTAB …
By Kate Gaudry & Samuel Hayim
6 months ago 17

Reverse Payment Settlements and Holdup Under PTAB

One reason the PTAB is convenient for reaching reverse payment deals is that there is no direct antitrust oversight, since its judges are administrators with very narrow …
By Erik Hovenkamp & Jorge Lemus
6 months ago 8

Breaking through the culture of Examiner v. Applicant at the USPTO

Somehow a culture of Examiner v. Applicant has evolved. There doesn't seem to be much in examiner training to pit them against external stakeholders. No evidence there …
By Raina Haque
6 months ago 26

Are the Pre-Appeal Conference and P3 Hopelessly Rigged? Practice Tips for the Savvy Practitioner

The unadvertised feature is that the Pre-Appeal Conference board is assembled by an administrative assistant in the technology center, but the P3 board is assembled by the …
By Russ Krajec
6 months ago 2

The Anatomy of a Bogus Alice Rejection

First, this type of circular "logic" is at the heart of virtually all Alice rejections. Here the examiner concludes there is nothing significantly more than the judicial …
By Gene Quinn
6 months ago 15

Alice Experts and the Return of Second Pair of Eyes to the PTO

In every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even …
By Gene Quinn
6 months ago 64

After Cuozzo, Congress Must Take Back the Ball

While the Supreme Court spoke clearly and unanimously on the issue in Cuozzo, this hardly means the standard to be applied to claim construction in IPRs has …
By Jonathan Tropp
6 months ago 8

Message from the USPTO: It’s Patent Prosecution, not Persecution

Examiners are not supposed to think about the nebulous areas of 101, 102, or 103, nor are they to interpret case law from judicial opinions. Instead, the USPTO has already …
By Raina Haque
6 months ago 80

Prosecution reopened: Examiners stop applicants from appealing

Due to a bizarre jurisdictional “feature,” the Board does not actually get jurisdiction over a case until either a Reply Brief has been filed or the time …
By Gene Quinn
6 months ago 26

Administrative Purgatory: Waiting 14 months and counting for action after Board reverses examiner

Delay, frustrate, harass and ignore patent applicants. Issue frivolous rejections if necessary, but reject at all costs. If the Board issues a complete reversal just reopen prosecution. …
By Gene Quinn
6 months ago 17

Are patent examiners instructed to issue frivolous rejections?

So an applicant waits years on appeal to get relief from frivolous rejections, achieves a complete and total victory, and their reward is another bogus rejection from …
By Gene Quinn
6 months ago 44

The Impotence of the Patent Trial and Appeal Board

What is happening in TC 3600 is prosecution is being re-opened for the purpose of issuing Alice rejections. With the help of readers, so far I’ve found …
By Gene Quinn
6 months ago 79

E-Commerce Art Units: Where Patent Applications Go to Die

Upon closer review things are much, much worse than I previously reported. The problem is also far more widespread. Using LexisNexis Patent Advisor®, I looked at the …
By Gene Quinn
6 months ago 108