Posts Tagged: claims
Winning Strategies for Getting Past the Five Types of Patent Examiner
Any patent attorney knows that each patent examiner can vary greatly in approach to examination. In this article, five different types of patent examiners and suggest prosecution …
Supreme Court Denies Cert in Two-Way Media v. Comcast, Refuses Another 101 Case
The U.S. Supreme Court denied a petition for writ of certiorari in Two-Way Media Ltd. v. Comcast Cable Communications, refusing to hear yet another appeal in …
Federal Circuit Treatment of ‘Commercial Success’ in Hatch-Waxman Cases
In order to establish that the commercial success factor supports a non-obviousness finding, the patentee must establish that a connection (or nexus) exists between the novel aspects …
Denying Inducement to Infringe in Face of a Drug Label: A Fool’s Errand?
Proving inducement to infringe requires showing that the accused infringer possessed “specific intent” to infringe. In pharmaceutical cases, particularly those arising in the Hatch-Waxman framework, specific intent …
Patenting Antibodies: Written Description Considerations in Antibody Patents
The Amgen v. Sanofi decision put most functional antibody claims into question, including epitope and competitive binding claims, as well as antibody claims based on a newly …
The CAFC Split Non-precedential Decision in Exergen v. Kaz Raises Interesting Issues About Eligibility Determinations
In Exergen Corporation v. Kaz USA, No. 16-2315 (March 8, 2018), the Federal Circuit, in a split non-precedential opinion, affirmed a holding that Exergen’s claims directed to methods …
PCT Species Claim Sufficient to Support Priority Claim of Later-filed Genus Claim
The issue was whether the PCT, which disclosed a “connection to fibre optics bundle which provides for lighting” was a sufficient written description to support the “light …
Analyzing obviousness and anticipation challenges to claims directed to an isolated component of a prior art mixture
Based on the governing Federal Circuit case law, where the patent claim at issue is directed to a specific component (such as a specific enantiomer) of a …
Beware of Conditional Limitations when Drafting Patent Claims
Buried in the claim language, conditional limitations may be a vulnerability in an otherwise valuable claim. A conditional limitation is a claim feature that depends on a …
Requisites of a Patent Application: Claims and drawings technically not required on filing date
For as long as I can remember, in order for a nonprovisional utility patent application to be awarded the all important filing date you had to file …
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 …
An Introduction to Patent Claims
The examination you receive from the patent examiner is never going to be any better than the patent claims you provide. If you provide preposterously broad patent …
Pursuit of Extremely Short Patent Claims
Dear Patent Attorney, Please stop filing extremely short, overly broad patent claims. I recently conducted a study to measure the effectiveness of various prosecution strategies. The study …
Patent Drafting: The Use of Relative Terminology Can Be Dangerous
The use of relative terminology, which are short-hand terms that express a certain similarity, are quite common in every day conversation, but are not always appropriate for …
Cuozzo and Broadest Reasonable Interpretation – Should the Ability to Amend Be Relevant?
On July 8, in In re Cuozzo, the CAFC denied en banc review of a prior panel decision that confirms the PTAB can use a different standard for …
