Posts Tagged: prior art


Could or should the USPTO adopt the EPO problem-and-solution approach for assessing obviousness?

There is a plausible case that the US law on obviousness is indeed compatible with the EPO problem-and-solution approach. It could even be said that the steps …
By Brian Cronin
1 month ago 13

Comparing and Contrasting European 2-part claims with US Jepson claims

European practice requires a strict distribution of the features before and after "characterizing", where those prior art features that are common with the definition of the invention …
By Brian Cronin
3 months ago 1

Videos as a Printed Publication in Inter Partes Review

In a handful of IPRs, the Petitioner has relied on a video, and asserted that the video constitutes a printed publication... One factor raised in these cases …
By Michael K. O’Neill
3 months ago 1

CAFC says Antedating a Reference under Section 102(g) Focuses on Critical Period as a Whole

In an IPR decision, the Patent Trial and Appeal Board invalidated several claims from U.S. Patent No. 6,030,384 as anticipated or obvious over Japanese Publication No. H1033551…

Prior Art Combination that Sometimes Provides Results of Broadly Claimed Method Can Make that Method Obvious

In 2013, Google, Inc. (“Google”) filed inter partes review and covered business method petitions challenging the validity of Unwired Planet, LLC’s (“Unwired”) patent, at issue on appeal. …

Don’t Feed the Trolls: Practicality in View of the FTC’s Report on Patent Assertion Entities 

The Norwegian fairy tale “Three Billy Goats Gruff” was far ahead of its time and the moral of that story has a very relevant, modern application. In …
By Ravi Mohan
4 months ago 9

Negating Hindsight Reconstruction: A Logical Framework

It is well known that hindsight reconstruction is an insidious error that infects patent prosecution. The Federal Circuit has noted that it is a difficult task to …
By Peter Kramer
4 months ago 32

The China Syndrome: How recent developments in Chinese patents affect U.S. applicants

Chinese patents and patent applications are citable as prior art in most Western countries if they meet the usual criteria regarding publication dates of the cited patent …
By Manuel Fortin
5 months ago 7

Anticipating Expansion of Intervening Disclosures Under the AIA

Although what qualifies as art under the AIA can be distilled to disclosures before a patent application, both pre-AIA and AIA created exceptions for intervening disclosures in …
By Keith Fredlake
5 months ago 0

The America Invents Act Five Years Later: Reality, Consequences and Perspectives

At exactly 11:42am on September 16, 2011, President Barak Obama signed the America Invents Act into law. As President Obama put his pen down he said: “All right guys, …
By Gene Quinn
6 months ago 22

Is Enfish Much Ado About Nothing?

Enfish bothers me. The Federal Circuit decision puts forth some great phrases, but I am concerned that Enfish will not be as useful as hoped in overcoming §101 …
By Scott Zimmerman
9 months ago 15

Supreme Court to Weigh in on Damages for Design Patent Infringement

Recent decisions from the U.S. Court of Appeals for the Federal Circuit regarding damages available in design patent cases highlight the court’s divergence from its …
By Charlene Morrow & Sapna Mehta
9 months ago 0

The patent system will survive, but not thrive over the short term

Bruce Kisliuk: ''Those with more resources have some advantages in any litigation. That’s one reason a patent right is important, it can level that playing field …
By Gene Quinn
1 year ago 1

Searching the Art Behind Innovation

For many innovations, in addition to doing a traditional patent search it will be of the utmost importance to search European and east Asian literature, particularly literature …
By Stephan Sangwon Kim
1 year ago 2

The importance of a quality patent search for strategic monetization of innovation

Properly used, a qualified search can be one of the most cost-effective and valuable tools a company can have to not only capture and create innovation, but …