Posts Tagged: prosecution
Mission Impossible? How to Effectively Draft the Background Section of a Patent Specification in Compliance with Both USPTO and EPO Practice
Preparation of the background section of a specification that complies with the requirements of both U.S. Patent and Trademark Office (USPTO) and European Patent Office (EPO) …
Intellectual Ventures v. T-Mobile: Summary Judgment of Non-Infringement Vacated Due to Incorrect Claim Construction
In claim construction analyses, the plain and ordinary meaning of a claim term will not be narrowed by statements in the prosecution history, unless those statements clearly …
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 …
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 …
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 …
Federal Circuit: Disclaimer based on arguments actually made, not those that could have been made
The scope of surrender is not limited to what is necessary to overcome the prior art reference. Instead, patentees may surrender more than is required to overcome …
USPTO issues new memorandum on software eligibility in light of McRo, BASCOM
Earlier today the United States Patent and Trademark Office issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The …
Estimating the cost for filing, obtaining and maintaining patents across the globe
In several jurisdictions across the globe, the costs are a function of various variables such as the mode of filing, the type of applicant, the number of …
USPTO ‘judgment calls’ to blame for reopening prosecution after complete Board reversal
Robert Bahr, the Deputy Commissioner for Patent Examination Policy, responded that “hindsight is great,” and went on to explain that they thought that the rejections that were …
The Anatomy of a Bogus Alice Rejection
First, this type of circular "logic" is at the heart of virtually all Alice rejections. Here the examiner concludes there is nothing significantly more than the judicial …
Alice Experts and the Return of Second Pair of Eyes to the PTO
In every art unit examiners confirm that there is an examiner within the Art Unit who is the Alice expert and that examiners have said that even …
Prosecution reopened: Examiners stop applicants from appealing
Due to a bizarre jurisdictional “feature,” the Board does not actually get jurisdiction over a case until either a Reply Brief has been filed or the time …
Getting a patent is not the end goal for a startup, it’s just the beginning
RUSS KRAJEC: Getting a patent is not the end goal. Using an issued patent is not the end goal. It’s the beginning for the startup. Think …
Understanding the Patent Process: Rejections vs. Objections
The refusal to grant claims because the subject matter as claimed is considered unpatentable is called a “rejection.” The term “rejected” is used by the patent examiner …
Trends in Subject Matter Eligibility for Biotechnology Inventions
The USPTO continues to issue patents related to biotechnology and organic chemistry inventions despite the Supreme Court rulings and USPTO guidelines implementing the ruling related to the …
