Posts Tagged: patent prosecution


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
5 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
5 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
5 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
5 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
8 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
8 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
8 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
9 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
9 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
9 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
9 months ago 6

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
11 months 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
11 months 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
12 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
1 year ago 8

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