Posts Tagged: "patent prosecution"

Responding to Obviousness Rejections in Light of the USPTO’s New Guidance

The United States Patent and Trademark Office (USPTO) recently released new guidance to patent examiners on making obviousness rejections. The guidance focuses on post-KSR precedential jurisprudence from the U.S. Court of Appeals for the Federal Circuit. Some of the guidance is fairly mundane, some of it is not. The purpose of this article is to propose a few responses one might use to counter rejections that apply certain problematic aspects of the new guidance.

Mastering USPTO DOCX Formats: The Ultimate Guide

The U.S. Patent and Trademark Office (USPTO) has been working diligently towards introducing a system supporting the submission of new patent applications in structured text, particularly utilizing the DOCX format, over the past few years. This transition has recently been realized, as the Office officially implemented DOCX filing starting from January 17, 2024. This consideration of filing in DOCX format stemmed from a Proposed Rule issued by the USPTO on July 31, 2019.

Automotive Patents: Brands are Wasting Millions of Dollars Annually in the United States Alone

The recent U.S. auto workers strike has had a wide reaching impact on the automotive industry, including spurring investors to review their current automotive investments. While significant events like the strike often cause this sort of reaction, more common practices from automakers should – but usually don’t – draw investor attention, including intellectual property management. Our recent three-part analysis on the financial impact of patent lapse strategies for major automotive manufacturers found, among other data points,that major auto brands overspend several million dollars annually by paying fees to renew non-strategic U.S. patents. Investors who understand the patent lapsing strategies of these automotive companies can more effectively evaluate their growth plans and innovation strategies. 

U.S., EPO and Chinese Software-Related Patent Grants Remained Steady in 2023

As an update to my previous posts from 2017, 2019, 2020, March 2021, August 2021, 2022, and 2023, it has now been almost a decade since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Yet the debate still rages over when a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none” (as eloquently phrased 76 years ago by then-Supreme Court Justice Douglas in Funk Bros. Seed Co. v. Kalo Inoculant Co.).

Brazilian Lawmaker Introduces Bill to Allow AI as Inventor

On February 20, 2024, a Brazilian congress member, Antônio Luiz Rodrigues Mano Júnior (known as Júnior Mano), introduced a bill to amend the national IP Statute (Law #9,279/96) and regulate the ownership of inventions generated by artificial intelligence systems. Bill #303/2024 proposes the addition of a paragraph to Article 6 of the IP Statute, which regulates ownership of inventions, with the following wording: “in the case of inventions autonomously generated by artificial intelligence system, the patent can be requested in the name of the artificial intelligence system that has created the invention, being the artificial intelligence system considered the inventor and owner of rights arising from the invention.”