Posts Tagged: patent prosecution


‘AISITAs’ and Written Description Requirements: Considerations and Guidance for AI Patent Applications

Artificial intelligence (AI) is everywhere, touching nearly every aspect of our daily lives, including how we work, communicate, shop, travel and more. The term “AI” is generally …

Are 5% of All U.S. Issued Patents Presumed to Be Unenforceable Under Laches Due to Their Priority Claims?

Laches is an equitable defense that may be raised in a patent-related proceeding. If a defending party can show that a patent holder exhibited unreasonable delay that …
By Kate Gaudry
7 days ago 7

Hirshfeld Says He May Move Forward on Important Items If Biden Appointee Takes Too Long

IPWatchdog and LexisNexis held a “Conversation with the Commissioner of the USPTO” today, in which Drew Hirshfeld, the U.S. Patent and Trademark Office (USPTO) Commissioner for …
By Eileen McDermott
10 days ago 3

Did the USPTO Institute Procedural Obstacles to Block Patents for a Particular Applicant?

Gilbert Hyatt filed hundreds of patent applications across fields such as machine control, audio and image processing, and computer technology. While many such applicants can similarly claim …
By Kate Gaudry
19 days ago 57

Brazil’s Patent System: Latest Statistics on Efforts to Reduce the Backlog and the Road Ahead

Almost two years ago, the Brazilian Patent and Trademark Office (BPTO) launched a plan to reduce the backlog in examination of patent applications, which has had positive …

A Recent Senate IP Subcommittee Hearing Demonstrates the Danger of Patent Fallacies

During the Senate Judiciary’s Subcommittee on Intellectual Property hearing, titled Protecting Real Innovations by Improving Patent Quality, held on June 22,  Jorge Contreras, Presidential Scholar and Professor …
By Paul Morinville
26 days ago 10

Disclosure Requirements in Software Patents: Avoiding Indefiniteness

How much detail is needed in a patent application for a software-based invention? Software patents present some unique challenges that many other kinds of patent applications do …
By Rackham H. Karlsson
28 days ago 21

Patent Procurement and Strategy for Business Success Part III: Prosecution – Wielding an Invisible Hand

In the United States Patent and Trademark Office's (USPTO’s ) patent academy (or today’s version of such), patent examiners are taught that the objective of the …
By Reginald Ratliff
1 month ago 3

Patent Procurement and Strategy for Business Success Part II: Claims – Targeting the Right Infringers

To protect the inventions that are important to a company's current and future success, the claims of the patents covering those inventions must accurately define the subject …
By Reginald Ratliff
1 month ago 11

Patent Procurement and Strategy for Business Success: Building and Strategically Using Patents that Target the Right Infringers and Thwart Competitive Countermeasures

Successful patent strategies for business are inexorably tied to the quality of the patents upon which the patent strategies depend. The quality of a patent depends upon …
By Reginald Ratliff
2 months ago 8

Written Description in the Life Sciences: The Devil is in the Details

There is a quid pro quo under the U.S. patent laws. In exchange for disclosing her invention, an inventor receives a limited monopoly. Recent developments, however, …

CAFC Affirms District Court Ruling for Amazon on Claim Construction

Last week, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the United States District Court for the Northern District of California’s final …
By Butch Laker
2 months ago 0

After Hyatt v. Hirshfeld, it Might Be Time to Pay Attention to Prosecution Laches

Gilbert Hyatt was one of many applicants who filed many patent applications shortly before the June 8, 1995 transition point, where patent terms transitioned from being defined based on 17 …
By Kate Gaudry
2 months ago 13

Fit to Drive: Three Inspiring Office Action Responses from the USPTO’s Art Unit 3668

Every patent practitioner has faced the same obstacle — a client's application is assigned to an unfamiliar art unit. This presents two challenges: unfamiliarity with the examiners and …
By Yvonne Morris
2 months ago 3

Ninth Circuit Upholds Ruling Against Gil Hyatt: The Paperwork Reduction Act Does Not Apply to Individualized Communications Between The USPTO and Applicants

On May 20, the U.S. Court of Appeals for the Ninth Circuit affirmed the decision of the United States District Court for the District of Nevada, holding …
By Logan Murr
2 months ago 9