Posts Tagged: patent prosecution
USPTO issues 101 guidance limiting examiner ability to merely conclude elements are well-known, convention or routine
The Notice is significant because in a 101 rejection, an examiner cannot simply assume that elements or a combination are "well understood, routine or conventional." Examiners will be …
Patent Prosecution Strategies for Building a Strong Patent Portfolio
Joining Gene will be Bob Stoll, former Commissioner for Patents at the USPTO and current partner at Drinker Biddle, Meredith Addy, a patent litigator and appellate attorney …
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 …
Practical Tips for Increasing Patent Allowance
The first commandment of patent prosecution should be to know your patent examiner. To do this patent practitioners need to take into account examiner time constraints and …
The Unpredictable Prospects of Patenting Cancer Innovation
Art Unit 1618 and 1621 are both identified as relating to “organic compounds – part of the class 532-570 series.” However, the patenting probability for cancer related applications is markedly …
Drafting Quality Patents: Avoiding 112 Rejections at the USPTO
The value of a patent, for better or worse, is related to the likelihood that it could be successfully defended against challenges. In the past it was …
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 …
Preparing and Prosecuting a Patent to Stand Up to Challenge
Join Gene Quinn, patent attorney and publisher of IPWatchdog.com, on Thursday, February 8, 2018, at 12pm ET, for a discussion on patent prosecution strategy. Joining Gene will be …
Strengthening Patent Value Throughout the Patent Prosecution Flow
Patents allow you to protect your inventions, license the use of the inventions of others, and introduce additional revenue streams to your business. Patents also require investments …
A Primer on Indefiniteness and Means Plus Function
Means plus function claiming allows the drafter to claim the invention based on functionality rather than the more traditional (and preferred) claiming technique that employs structure within …
Patent Drafting: Trends, Reality and Avoiding Rejections
Join Gene Quinn on Thursday, November 9 at 2:00 PM ET for a free webinar conversation on the trends and reality of 112 disclosure requirements. I will be joined by …
Open Prosecution as a Strategy to Counter IPRs Filed by Defendants
One of the most valuable benefits of Open Prosecution is when a patentee is forced to enforce a patent. If the patentee filed for a Continuation, it …
Unlocking Examiner Rejections: Using Forward Citations Strategically in Prosecution, Litigation and Due Diligence
Join Gene Quinn, founder of IPWatchdog.com, on Thursday, October 26, 2017 at 12:00 Eastern for a free webinar discussion on the strategic use of "forward rejections" in prosecution, litigation …
Inherency Rejections: Combating Inherent Obviousness
An inherency rejection, whether it be inherent anticipation or inherent obviousness, can be extremely difficult to overcome. Indeed, at many times it seems there is a great …
Federal Circuit says inequitable conduct can be inferred from activities in a later patent litigation?
Although the patent prosecution process is adversarial in nature, patent practitioners must be keenly aware of their duty to maintain the integrity of any subsequently issued patent …
