Having an examiner treat a feature which is absent from the cited art as insufficient to establish patentability can be a serious setback during patent prosecution. If the applicant amends
Patent Office Action Insights
Until recently, I did not know that there was a rule against describing a claim element in terms of another device or structure which is not referred to elsewhere in the claim.
One of the things that I think has significantly improved both my quality of life and my success as a patent prosecutor is front-loading patent applications to avoid interminable cycles
This is the second part of a two part series responding to Inc.com’s Seven Signs You’ve Hired a Great Patent Attorney. In Part 1 I dealt with the first
If you’ve followed my previous posts on how to achieve success in the workplace, you know the importance I place on surrounding oneself with a great team. Hire people smarter
Surprisingly, despite a solicitor recommendation, the Supreme Court denied cert in American Axle. I can’t say I’m particularly disappointed. I recorded a video last year (best viewed at 2x speed)
I want to talk about American Axle v. Neapco. This is a reasonably interesting case in its own right, since it applied section 101 to driveline propeller shaft manufacturing technology,
Getting Out of Autodrive: Arguments to Overcome “Automatic Means to Replace Manual Activity” in Obviousness Rejections
On its surface, the rationale behind “automatic means to replace manual activity” rejections seems to make sense. Simply replacing work done by hand with the same work performed by a
Obviousness rejections enter into the uncanny territory between objective fact and subjective interpretation, contributing to their status as the bane of most patent attorneys’ existence. On the one hand, prior
Group Art Unit 2128 deals with some of the most exciting and cutting-edge technology in the Patent Office, artificial intelligence and simulation modeling. However, patent examiners sometimes reduce these inventions
“It’s annoying to hear – your arguments are not persuasive or they are considered moot in the view of new grounds of rejection” Negotiating a Patent with the Examiner Patent
AU 3668 – Computerized Vehicle Controls and Navigation, Radio Wave, Optical and Acoustic Wave Communication, Robotics, and Nuclear Systems Every patent practitioner has faced the same obstacle — a client’s
“Having loose ends in an intellectual property collaboration agreement can lead to disaster.” An inventor has a brilliant idea but doesn’t have the capability to implement it. He needs a
“The Federal Circuit’s focus on an aspect of the Stanford application which no one could (or did) argue was a protectable innovation not only damaged Stanford, it also squandered an opportunity to
Prosecution is the bread and butter of the patent lawyer’s practice. Because you will likely spend most of your time during the workday reading and responding to office actions, honing
“If MPEP is the rule book, Arguminer is the practical guide to how patent prosecutors have applied those rules (and more) to overcome patent rejections.” Area of help (Broad) Area
We used our extensive database of patent prosecution documents to identify patent attorneys and agents with the highest performance, based on their ability to overcome 101 rejections, considering both granted
“If you want to do a few small things right, do them yourself. If you want to do great things and make a big impact, learn to delegate.” –
Patent lawyers love the overused quote from Diamond v. Chakrabarty, “everything under the sun invented by man.” Forty years later, this remains good law in most situations. However, Mayo v.
Interviewing with the patent examiner can provide many benefits to your clients. Oral communication is much more efficient than written communication. As a result, you can often cover more ground
“For the things we have to learn before we can do them, we learn by doing them.” – Aristotle After stepping out of law school, passing your patent bar exam,
It’s natural to trust the examiner and approach things like a lawyer while prosecuting patent applications. However, it may not always be the right course of action to get the
Did you know - "Behind every 102/103 type rejection lies a 112 rejection?" Take a look at patent rejection from patent prosecutor's eye. As a bonus, you shall learn 2 effective ways to deal with the patent rejections!
In some technology classes, subject matter eligibility rejections are par for the course, but in others, they can come as more of a surprise. Take, for example, the field of
Want to teach the nitty-gritty needed to write office action responses to new patent prosecution attorneys. Read on to find out if there is an easy way to do it!
Since the patent office first started applying it in late 2014, the case of Alice v. CLS Bank has been a persistent thorn in the side of patent attorneys, particularly
Is there an easy way to find proven office action responses?……. Read on to find out! While the USPTO has reported that the number of, and variability in, rejections based