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James Yang

is a patent attorney and helps inventors and mid-sized businesses secure intellectual property protection for their inventions. He also publishes articles relating to the patent system at OC Patent Lawyer and is a a principal at Stetina Brunda Garred and Brucker.

Recent Articles by James Yang

A Claim of priority Cannot Be Made With an Incorporation by Reference

Upon filing a patent application, the USPTO mails a filing receipt.  The domestic and foreign claim of priority is stated and should be checked to make sure that it reflects the claim of priority that the inventor intends.  Otherwise, the patent owner may not be able to cure the defect when trying to sue an infringer after it issues as a patent.  If it can be fixed after it matures into a patent, the costs are much higher than the costs to fix while the patent application is still pending. 

Claimed and prior art ranges must have meaningful difference for nonobviousness

Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed in this manner but other types of inventions can be defined in terms of a numerical range such as a length as well. In re: Brandt (Fed. Cir. March 27, 2018) explains that very small differences in the respective ranges can support an obviousness rejection unless the inventor shows a meaningful difference exists.

Top Patent Blogs for 2018

This is an update for the Top Patent Blogs post that I published back in 2011… In preparing for this Top Patent Blogs post, I reached out to the writers (patent attorneys and patent professor) from the Top Patent Blogs post and asked them a few questions about why they maintain their blogs. Not all responded but from those that did, I got a sense that their blogs are more than just another means of attracting new business. For example, a few use blogging as a reason for reading cases and briefing them to keep up with the current state of patent law. The reasons varied far and wide. To summarize or to get to the essence of their differentiation, I asked them how they felt their blog was different from the others on the list. For their answers, see the Comment by Blog Manager column below in the ranking list.

BRI and how it increases an obviousness determination

Owens Corning v. Fast Felt (Fed. Cir. 2017) illustrates an example of how the broadest reasonable interpretation (BRI) standard increases the chances that an obviousness argument could successfully invalidate a patent claim during a post grant patent review proceeding; and make it more difficult to overcome an obviousness rejection during patent prosecution. It also illustrates how broadening a claimed invention’s field of use could be detrimental to the claim’s validity and make it harder to overcome an obviousness rejection.