Posts Tagged: patent examiners
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 …
Dear Examiner: I am an Imposter
That feeling that you are a fraud and that, one day, people will find out you have no idea what you are doing has a name—Impostor …
USPTO Announces Access to Relevant Prior Art Initiative to Import Prior Art Citations into Patent Applications
The USPTO recently announced the implementation of the first phase of the Access to Relevant Prior Art (RPA) Initiative. The initiative is being designed to reduce the …
Visualizing Outcome Inconsistency at the USPTO
In an ideal world, your chance of getting a patent allowed is based on the merits of your patent application and independent of the largely random assignment …
Could Have, Should Have, Would Have
It is irresponsible for adults to give children who fail to complete their work credit based on the excuse that the children could have, should have, would …
Investing in Inventing: A Patent Process Primer for Startups
The patent process is long and complex, but well worth the effort if it means protecting your invention and your new company. Key decisions made along the …
Berkheimer, the Administrative Procedure Act, and PTO Motions to Vacate PTAB § 101 Decisions
After several years in which the U.S. Patent and Trademark Office (PTO) did not seem to have an official position on the issue, and many Patent …
CAFC Vacates Board for Moving Target Rejections, Failure to Consider Reply Brief
The moving target rejections were largely due to the fact that the examiner's first clear explanation that she was relying on structural identity, and not inherency, appeared …
Predicting Future Patent Outcomes
In this article, I compute a “three-year grant rate” that shows the probability of obtaining a granted patent within three years of the first office action. This …
USPTO memo explains changed Alice Step 2B to examiners
Yesterday the USPTO issued subject matter eligibility guidance to its examining corps in a memorandum that changes how examiners approach their Alice Step 2B analysis. Specifically, the …
Innovative Use of Patent Examiner Statistics Improves Efficiency and Strengthens Portfolios
We recently handled an application in which the examiner rejected the independent claims as obvious in view of six references from a variety of different fields. Submitting …
Cognitive Dissonance: How the PTAB Reported Appeal Statistics Ruins the Data for Everyone
The PTO reports a case as affirmed if all claims are rejected for at least one issue on appeal and reversed if all claims are reversed for …
A Revolutionary Approach to Obtaining Software Patents Without Appealing to the PTAB
Today’s environment demands an agile approach, one that involves substantial up-front planning, followed by continuously learning from both the client and the marketplace, using a strategy …
Ignorance of the Law is No Excuse for Cost of the USPTO’s High ex parte Appeal Reversal Rates
As the old saying goes: Ignorance of the law is no excuse. So there seems to be no good reason that the Examining corps’ inability to apply …
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 …
