Posts Tagged: patent prosecution
Challenges for Managing Chinese Patent Prosecution: Anything More Than Lost in Translation?
If you are an in-house counsel at a U.S. technology company, managing its global patent portfolio with a potentially significant exposure in China, you face some …
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 …
How to Get More Business When Patent Litigation Filings are Down
Lawyers often wonder how to enhance their marketability and in the process, generate more revenue or improve their image. After all, success at a firm is about “…
Is there a Tide-Change in the Prospects of Patenting Business Method Innovations?
In the years after the Alice decision, it had seemed as though examiners in the business method art units felt as though their hands were tied with …
Review of USPTO should start at the top, not with examiners
In an article published on April 23, 2017, Gene Quinn wrote about President Trump’s workforce reduction plan and his proposal for what it should mean for the United …
Ex Parte Appeal Oral Hearings: Making Your Case Right Before Decision Time
This data set shows that Oral Hearings are rarely conducted. (See Figure 1.) Across the 72,443 appeals, only 459 (0.63%) appeals had an Oral Hearing... As shown in Figure 4, Oral Hearings …
Patenting Costs in ASEAN: Upcoming Global Economic Powerhouse
Founded in 1967 by Indonesia, Malaysia, the Philippines, Singapore, and Thailand, the Association of Southeast Asian Nations (ASEAN) is a regional organization that aims to “accelerate economic growth, …
Flexible problem-solution analysis for drafters with Europe in mind
The problem-solution paradigm has become a cornerstone of patentability in Europe. If the invention cannot be reduced to the format of a technical solution to a technical …
Doc’s Orders: Analogize to Overcome Patent Eligibility Rejections
Taking a hint from what has worked before can give patent prosecutors an advantage. The question is then how to find such examples for use in forming …
Patent Prosecution 101: Understanding Patent Examiner Rejections
Unlike certain rejections one faces in life, a rejection from a patent examiner is never the end of the story, and definitely not final – even when the …
Patent Strategy: Advanced Patent Claim Drafting for Inventors
Today we pick up our series with discussion of some advanced patent claim drafting strategies for inventors and others new to the art of claim drafting. Sometimes …
PPH at the USPTO: Following the Patent Prosecution Highway for a Smooth Ride
If you qualify for participation in the PPH it makes great sense to attempt to get into the program. Not only will your application move from wherever …
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 …
Patently Surreal: The Obama Strategic Plan on IP Enforcement
It is almost impossible to believe this report is the work product of the Obama Administration. The section on patents, which begins on page 134, reads like a …
A STEPP In the Right Direction: A review of the PTO Stakeholder Training on Examination and Practice and Procedure (STEPP)
Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in …
