Posts Tagged: prosecution


Intellectual Ventures v. T-Mobile: Summary Judgment of Non-Infringement Vacated Due to Incorrect Claim Construction

In claim construction analyses, the plain and ordinary meaning of a claim term will not be narrowed by statements in the prosecution history, unless those statements clearly …

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 …

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
8 months ago 11

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 year ago 8

Federal Circuit: Disclaimer based on arguments actually made, not those that could have been made

The scope of surrender is not limited to what is necessary to overcome the prior art reference. Instead, patentees may surrender more than is required to overcome …

USPTO issues new memorandum on software eligibility in light of McRo, BASCOM

Earlier today the United States Patent and Trademark Office issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The …
By Gene Quinn
2 years ago 11

Estimating the cost for filing, obtaining and maintaining patents across the globe

In several jurisdictions across the globe, the costs are a function of various variables such as the mode of filing, the type of applicant, the number of …

USPTO ‘judgment calls’ to blame for reopening prosecution after complete Board reversal

Robert Bahr, the Deputy Commissioner for Patent Examination Policy, responded that “hindsight is great,” and went on to explain that they thought that the rejections that were …
By Gene Quinn
2 years ago 53

The Anatomy of a Bogus Alice Rejection

First, this type of circular "logic" is at the heart of virtually all Alice rejections. Here the examiner concludes there is nothing significantly more than the judicial …
By Gene Quinn
2 years ago 15

Alice Experts and the Return of Second Pair of Eyes to the PTO

In every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even …
By Gene Quinn
2 years ago 64

Prosecution reopened: Examiners stop applicants from appealing

Due to a bizarre jurisdictional “feature,” the Board does not actually get jurisdiction over a case until either a Reply Brief has been filed or the time …
By Gene Quinn
2 years ago 26

Getting a patent is not the end goal for a startup, it’s just the beginning

RUSS KRAJEC: Getting a patent is not the end goal. Using an issued patent is not the end goal. It’s the beginning for the startup. Think …
By Gene Quinn
2 years ago 1

Understanding the Patent Process: Rejections vs. Objections

The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” is used by the patent examiner …
By Gene Quinn
3 years ago 1

Trends in Subject Matter Eligibility for Biotechnology Inventions

The USPTO continues to issue patents related to biotechnology and organic chemistry inventions despite the Supreme Court rulings and USPTO guidelines implementing the ruling related to the …
By Gaudry, Grab & McKeon
3 years ago 1

An Overview of the U.S. Patent Process

The first time you will substantively hear from the examiner is when the examiner issues what is referred to as a First Office Action on the Merits (…
By Gene Quinn
5 years ago 2

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