Posts Tagged: patent prosecution


IPW Course: Patent Practice Training: Intro to Patent Prosecution

You’ve passed the patent bar exam. Now what? Having a license to practice is just the beginning. This is why Gene Quinn and John White designed …
By Gene Quinn
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USPTO Issues Additional Subject Matter Eligibility Guidance

On Thursday, October 17, the USPTO issued new patent eligibility guidance. The new guidance discusses and elaborates on the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG) that was …
By John M. Rogitz
3 days ago 20

Professors Brief Capitol Hill Staffers on Proposal to Weed Out ‘Bad Patents’

On Thursday, October 17, a Capitol Hill staff briefing will take place at 3:30 PM in 226 Dirksen Senate Office Building on a proposal to increase the amount of time …
By Steve Brachmann
6 days ago 46

USPTO Seeks Dismissal of Class Action Inventor Suit Filed Over SAWS Program

On September 26, the U.S. Patent and Trademark Office filed a motion to dismiss a class action complaint  filed by two inventors alleging violations of the Privacy …
By Steve Brachmann
17 days ago 23

Other Barks & Bites, October 5: USPTO Rulemaking Updates, Federal Circuit Weighs in on 101, and DOJ Tells SCOTUS to Deny Google Appeal

This past week in Other Barks & Bites: the USPTO delays the effective date for mandating electronic trademark application submissions and issues a proposed rulemaking on Patent Term …
By IPWatchdog
18 days ago 0

SUCCESS Act Comments Are In: Access, Enforceability, Predictability Concerns Underscored

In May, the USPTO held the first of three hearings prompted by the Study of Underrepresented Classes Chasing Engineering and Science (SUCCESS) Act, which requires the USPTO …
By Eileen McDermott
21 days ago 3

What to Know About Drafting Patent Claims

In order to obtain exclusive rights on an invention, you must file for and obtain a patent. Many inventors will initially opt to file a provisional patent …
By Gene Quinn
25 days ago 3

Improving Speed and Quality Using Automation for Patent Application Drafting

Patent application drafters are front-line participants to some of the most amazing innovations in the world today. A recent WIPO paper on Artificial Intelligence (AI) outlines how …
By Shawn Lillemo
28 days ago 3

After Final Consideration Pilot Program 2.0 Extended by USPTO

The United States Patent and Trademark Office has announced that the After Final Consideration Pilot 2.0 (AFCP 2.0) has been extended to September 30, 2020. AFCP 2.0 is part of our ongoing …
By Gene Quinn
1 month ago 3

Proving a Negative Claim Limitation: A Tale of Three Nonprecedential Cases

In the past 10 months, the issue of proving negative claim limitations has cropped up on appeals to the Federal Circuit. At least three panels of the Federal …
By Daniel Hanson
1 month ago 31

If You Want to Protect Your Business Method, Reframe It as a Technical Invention

The most effective way to protect an inventive business method is with a patent on a technical invention. Ever since the U.S. Supreme Court’s 2014 Alice …
By Mark Nowotarski
2 months ago 9

USPTO Leadership Sides With Patent Owner, Ruling Even Deficient Complaints Trigger Time-Bar

On August 23, the Patent Trial and Appeal Board’s (PTAB’s) Precedential Opinion Panel (POP) issued a decision granting patent owner 360Heros’ request for rehearing of an …
By Steve Brachmann
2 months ago 5

Examining the Unforeseen Effects of the USPTO’s New Section 112 Guidelines

When the USPTO issued its 2019 Revised Patent Subject Matter Eligibility Guidance in January of this year, it seemed as if the patentability tides had finally shifted in …
By Wen Xie
2 months ago 6

Federal Circuit Agrees That Argument-Based Prosecution Estoppel Barred Amgen from Succeeding on Infringement Claim

The Federal Circuit issued an opinion on July 29 affirming the District Court for the District of Delaware’s dismissal of Amgen Inc. and Amgen Manufacturing Ltd.’s (…

Why Engineering Companies Get into IP Trouble: Five Tips to Mitigate the Risks

Too often, engineering companies are in such a race to come up with the next big thing that they forget to consider the crucial step following their …
By Susana Kuehne
2 months ago 6