Posts Tagged: patent prosecution


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
1 month 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

How to Get More Business When Patent Litigation Filings are Down

Lawyers often wonder how to enhance their marketability and in the process, generate more revenue or improve their image.   After all, success at a firm is about “…
By Bernard Knight
2 months ago 23

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

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
5 months ago 1

Patenting Costs in ASEAN: Upcoming Global Economic Powerhouse

Founded in 1967 by Indonesia, Malaysia, the Philippines, Singapore, and Thailand, the Association of Southeast Asian Nations (ASEAN) is a regional organization that aims to “accelerate economic growth, …

Flexible problem-solution analysis for drafters with Europe in mind

The problem-solution paradigm has become a cornerstone of patentability in Europe. If the invention cannot be reduced to the format of a technical solution to a technical …
By Brian Cronin
7 months ago 2

Doc’s Orders: Analogize to Overcome Patent Eligibility Rejections

Taking a hint from what has worked before can give patent prosecutors an advantage. The question is then how to find such examples for use in forming …
By Andrew Gabriel
7 months ago 2

Patent Prosecution 101: Understanding Patent Examiner Rejections

Unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the …
By Gene Quinn
8 months ago 24

Patent Strategy: Advanced Patent Claim Drafting for Inventors

Today we pick up our series with discussion of some advanced patent claim drafting strategies for inventors and others new to the art of claim drafting. Sometimes …
By Gene Quinn
8 months ago 3

PPH at the USPTO: Following the Patent Prosecution Highway for a Smooth Ride

If you qualify for participation in the PPH it makes great sense to attempt to get into the program. Not only will your application move from wherever …
By Gene Quinn
9 months ago 0

An Examiner’s Tips For Speedier Patent Prosecution

Interactions between patent examiners and patent practitioners are often tense. At worst, these interactions can be an exercise in restraint with both parties thinly veiling their disdain …
By Lauren Anderson & Ryan Cagle
9 months ago 33

Patently Surreal: The Obama Strategic Plan on IP Enforcement

It is almost impossible to believe this report is the work product of the Obama Administration. The section on patents, which begins on page 134, reads like a …
By Gene Quinn
9 months ago 29

A STEPP In the Right Direction: A review of the PTO Stakeholder Training on Examination and Practice and Procedure (STEPP)

Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in …
By William E Nowakowski
10 months ago 1