Posts Tagged: patent prosecution


USPTO issues 101 guidance limiting examiner ability to merely conclude elements are well-known, convention or routine

The Notice is significant because in a 101 rejection, an examiner cannot simply assume that elements or a combination are "well understood, routine or conventional." Examiners will be …
By Gene Quinn
2 days ago 18

Patent Prosecution Strategies for Building a Strong Patent Portfolio

Joining Gene will be Bob Stoll, former Commissioner for Patents at the USPTO and current partner at Drinker Biddle, Meredith Addy, a patent litigator and appellate attorney …
By Gene Quinn
9 days ago 0

Federal Circuit Decisions Breathe New Life Into Alice Responses by Patent Prosecutors

While most commentary to date has focused on the implications for litigation, two recent Federal Circuit decisions have promising implications for patent prosecutors struggling to overcome conclusory …

Practical Tips for Increasing Patent Allowance

The first commandment of patent prosecution should be to know your patent examiner. To do this patent practitioners need to take into account examiner time constraints and …
By Gene Quinn
2 months ago 0

The Unpredictable Prospects of Patenting Cancer Innovation

Art Unit 1618 and 1621 are both identified as relating to “organic compounds – part of the class 532-570 series.” However, the patenting probability for cancer related applications is markedly …
By Kate Gaudry & Rodney Rothwell
2 months ago 5

Drafting Quality Patents: Avoiding 112 Rejections at the USPTO

The value of a patent, for better or worse, is related to the likelihood that it could be successfully defended against challenges. In the past it was …
By Renee C. Quinn
2 months ago 0

Admissions as Prior Art in a Patent: What they are and why you need to avoid them

So what is an admission? A statement made during patent prosecution identifying the work of another as prior art is called an admission. Admissions can and will …
By Gene Quinn
2 months ago 11

Preparing and Prosecuting a Patent to Stand Up to Challenge

Join Gene Quinn, patent attorney and publisher of IPWatchdog.com, on Thursday, February 8, 2018, at 12pm ET, for a discussion on patent prosecution strategy. Joining Gene will be …
By Gene Quinn
2 months ago 0

Strengthening Patent Value Throughout the Patent Prosecution Flow

Patents allow you to protect your inventions, license the use of the inventions of others, and introduce additional revenue streams to your business. Patents also require investments …
By Mike McLean
5 months ago 0

A Primer on Indefiniteness and Means Plus Function

Means plus function claiming allows the drafter to claim the invention based on functionality rather than the more traditional (and preferred) claiming technique that employs structure within …
By Gene Quinn
5 months ago 2

Patent Drafting: Trends, Reality and Avoiding Rejections

Join Gene Quinn on Thursday, November 9 at 2:00 PM ET for a free webinar conversation on the trends and reality of 112 disclosure requirements. I will be joined by …
By Gene Quinn
5 months ago 0

Open Prosecution as a Strategy to Counter IPRs Filed by Defendants

One of the most valuable benefits of Open Prosecution is when a patentee is forced to enforce a patent. If the patentee filed for a Continuation, it …
By Alec Schibanoff
6 months ago 10

Unlocking Examiner Rejections: Using Forward Citations Strategically in Prosecution, Litigation and Due Diligence

Join Gene Quinn, founder of IPWatchdog.com, on Thursday, October 26, 2017 at 12:00 Eastern for a free webinar discussion on the strategic use of "forward rejections" in prosecution, litigation …
By Gene Quinn
6 months ago 0

Inherency Rejections: Combating Inherent Obviousness

An inherency rejection, whether it be inherent anticipation or inherent obviousness, can be extremely difficult to overcome. Indeed, at many times it seems there is a great …
By Gene Quinn
6 months ago 2

Federal Circuit says inequitable conduct can be inferred from activities in a later patent litigation?

Although the patent prosecution process is adversarial in nature, patent practitioners must be keenly aware of their duty to maintain the integrity of any subsequently issued patent …
By Alison McGreary & Ryan Cagle
6 months ago 6