Is it possible to risk giving up trade secrets by failing to disclose them in your patent application? As counterintuitive as it may at first seem, the principle of specific performance under contract law offers support for this proposition; implying that improper 112 disclosure can be interpreted as breach of contract. Join IP Toolworks cofounder, William Morriss, as he takes a deep dive into case law, including the unusual proceedings surrounding Christianson v. Colt, and finds support (along with some ambiguity) for this conclusion.

#patents #tradesecrets #intellectualpropertylaw #caselaw #strategy

Patents and trade secrets are often thought of as a little like matter and anti-matter. Both formidable in their own right, but likely to incur mutual destruction when they make contact. In this video, IP Toolworks cofounder, William Morriss, video rethinks that assumption with 5 proven strategies for covering the same product with both patent and trade secret protection. We think doubling up your IP makes it “Twice as Nice”!

#tradesecrets #patents #ipstrategy

(1:15) Strategy No.1: Patent the product, but not the finished version
-CFMT, Inc. v. Yieldup Intern. Corp. (commercial product embodying patent required six months of work that itself turned into another patent. That second patent could have been held as a trade secret)

(2:48) Strategy No. 2: Patent the pieces, but not the product.
-Christianson v. Colt (claimed pieces of the M-16, but not the M-16 itself)

(4:21) Strategy No. 3: the product, but not the pieces.
-Eli Lilly v. Barr Labs (claimed compound and method of using a compound, but not method of making p-trifluoromethylphenol in sufficient quantities for the compound to be worthwhile)

(6:06) Strategy No. 4: patent the product without some pieces.
-Zygo v. Wyko (claimed interferometer itself, while commercial product also had an enclosure as well as components for making it work in the enclosure)
-Allvoice v. Nuance (claimed a product for interfacing a speech recognition engine with third party applications, but omitted limitations of monitoring and updating data that the commercial product used to connect audio to text representations of words even as the text representations were edited)

(8:00) Strategy No. 5: Rely on the skill in the art
-Only need to enable someone to make and use it without undue experimentation. For some things, this doesn’t mean much. On the other hand, for software inventions, in most cases as long as you describe the functions of the software, you’re good to go.
-Allvoice v. Nuance
-Fonar v. GE

Applying for a patent comes with a duty to disclose documents and information that are (or more aptly, may, be) material to patentability. But what happens to trade secrets and other proprietary data or information that is disclosed? Ever wonder if there might be a way to maintain them through and potentially beyond the application process?

Join IP Toolworks cofounder, William Morriss as he walks through provisions in the MPEP for doing just that. Who said you can’t have your cake and eat it too?

#Tradesecrets #patentprosecution #MPEP #patents #IPToolworks

Having your patent application misinterpreted by an examiner is a frustrating experience and there are multiple ways this can happen. In this video we look beyond the most common point of miscommunication, Broadest Reasonable Interpretation (BRI), to consider three additional ways patent examiners can interpret the claims or disclosure differently from how the applicant intended. Join IP Toolworks cofounder, WIlliam Morriss, as he analyzes three real world examples:

– Mischaracterization Misdirection (0:57)
– Gestalt Mischaracterization (5:17)
– Disclosure Mischaracterization (7:06)

And check out our video on handling mischaracterization and BRI here:
https://youtu.be/4eHkFi5wztU

Join us on a hunt for easter eggs in the MPEP; from obscured but useful citations on rearrangement of parts, to useful but overlooked tips for ordering claims, these hidden gems can sweeten your patent prosecution practice. But beware the rotten eggs. From misleading selective quotations on examiner’s use of common sense to supply limitations missing from the cited art, to inaccurate guidance on rearrangement of parts, these stinkers can get you headed in a seriously wrong direction.

1:00 Ex Parte Chicago Rawhide Mfg. Co.(Easter Egg)
2:30 MPEP 2141 (Rotten Egg)
5:35 MPEP 608.01(m) (Easter Egg)
7:58 MPEP 2144.04(VI)(C) (Rotten Egg)


#patentprosecution
#MPEP
#eastereggs
#IPToolworks

Happy St. Patrick’s Day! This holiday holds a special place in our hearts as patent attorneys (And it’s not just the green beer). When you think about it, applying for a patent can feel a lot like seeking out that pot of gold at the end of the rainbow. Something of incredible value, but the path to reach it is not always as easy or direct as we might wish. There is so much of the patent application process that comes down to luck and chance.

Join IP Toolworks cofounder, William Morriss in celebrating with three tips to for getting lucky prosecuting patents at the USPT0:

Tip #1: Be in the Right Place at the Right Time (1:21): Tips for utilizing claim language keywords (and considering the larger picture) to position your application in a more favorable technology class

Tip #2: Take Another Roll of the Dice (3:30): A Continuation, Divisional Application, Continuation-In-Part and Track 1 filing can sometimes give you a new shot at busting through an impasse

Tip #3: Don’t Let the Bad Luck (6:11) A proactive step you can take to make sure you don’t receive a final action after RCE

Bonus (8:33): No Such Thing as Beginners’Luck in Patent Prosecution: Experience can be a huge asset in successful prosecution. WIth the Arguminer software it is also possible to borrow the luck and experience of others

Do you have any tips for getting lucky? We’d love to hear in the comments below.

#Lucky #PatentProsecution #StPatricksDay #USPTO

Nobody likes to be misunderstood. Having an USPTO patent examiner mischaracterize your invention during examination can be among the most supremely frustrating misunderstandings to happen during patent prosecution. In this case, mischaracterization signals not only that you are failing to communicate with the examiner, but that you are likely receiving poor rejections based on inaccurate understanding of the prior art, and that the application may prematurely go to final. Worse, Broadest Reasonable Interpretation (BRI) means the deck is stacked in the examiner’s favor making it challenging and risky to fight.

In this video, IP Toolworks cofounder and patent attorney, William Morriss, shares tips for how to constructively approach this frustrating situation as well as some advice on what might be best to avoid.

Valentines day is all about expressing your appreciation of the special somebodies who maybe we forget to express appreciation for the other 364 days of the year.

Patent examiners are sort of the default people patent attorneys love to hate (or at least complain about), but today I’m here to say that Patent examiners deserve some love too. It’s a tough job. Examiners put in excruciating hours, are tasked with keeping up with voluminous art and ever changing jurisprudence and often end up spreading themselves thin in the process. And think about this. Without them, it would literally be impossible to get a patent.

And what if maybe, just maybe, expressing that love can get you a better patent (Or better chance at getting a patent). How exactly would you do that? I’m not sure of the logistics, much less ethics of sending your examiner a dozen roses and a box of chocolate covered strawberries. Instead I’ve put together four ways you can tell your examiner “I love you” without getting in trouble with the OED.

#3 Find the words they love to hear (and drop the words they hate)
Certain words I like to use drive my wife nuts. For example, for some reason that I don’t understand, she hates it when I describe something as “overwrought.” And after ten years of marriage, I’ve learned this phrase is best avoided when describing her emotional state. But presumably you don’t have this kind of deep history with every examiner. How do you figure out your examiners pet peeves and verbal tics?An interview is a great way to discover specific language your examiner may take issue with and the words they would like to see instead. You can also use Arguminer for some in-advance insights into the things your examiner likes and dislikes [Quick on-screen example] (Its like when you internet stalk your online crush before the first date to find out what restaurants they like, and make sure they’re not a serial killer) – not in a creepy way, just in a romantic, thoughtful and well prepared way, while at the same time, keeping yourself safe. #2 Make it a date Long romantic dinners aren’t so easy now that we’ve got a toddler in tow, but my wife still loves it when I take her out. Maybe it’s Saturday breakfast or a special event like a light festival we can all enjoy together. We’ve learned that the best dates happen when you plan in advance but also remain flexible to make the most out of the moment.When it comes to Examiners, there is no substitute for one-on-one face time. And just like a date with your sweetie, a little planning beforehand can maximize the precious moments that you do have together.

Janke v. Vidal recently raised some interesting questions surrounding patent subject matter eligibility at the USPTO, as it applies to a mathematical model of an invention. Interestingly, Janke chose to frame his queries using the fifty-year-old decision in Gottschalk v. Benson, which serves as a reminder of just how far 101 jurisprudence has come.

In this video, patent attorney and IP Toolworks cofounder, WIlliam Morriss, unpacks some of the questions (and questionable interpretations) at the heart of Janke’s petition, as well as the unlikely story behind Janke’s prosecution and appeal history.

In molecular biology cases, the examiners typically rely on the “natural phenomena” judicial exception in their §101 rejections. The Patent Office does not want to be responsible for issuing a patent on a biological matter that occurs naturally. This would potentially turn every living organism into an infringer.

To overcome this rejection under the Alice test and the 2019 examination guidelines, you must show the subject matter does not fall into the “natural phenomena” category or the claims include substantially more than a natural phenomenon. Where the claimed subject matter is artificial and the hand of an engineer or scientist is needed to produce it, the invention is legitimately the product of human ingenuity and human effort must be made to infringe the claims.

This argument succeeded in an application for a “Vesicular Linker and Uses Thereof in Nucleic Acid Library Construction and Sequencing” This case was filed in 2017 and issued in 2020.

Kudos to Z. Peter Sawicki from Westman, Champlin & Koehler for exemplary work in drafting this winning office action response!

Check out this interesting Argument in today’s featured #ArgumentOfTheWeek.

Check more inspiring arguments from Molecular Biology domain on this link: https://iptoolworks.com/overcome-101-rejections-in-molecular-biology/

Let us know in the comments which #ArtUnit you would like us to feature a successful argument from next.

P.S.
We aim to provide knowledge and resources to support #patent attorneys and agents through the prosecution cycle. Try our Arguminer software to find inspiring arguments from successful cases with the click of a button.

Book a demo today: https://iptoolworks.com/demo/

#PatentProsecution #OfficeAction #Arguments #PatentRejection #Arguminer

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 machine hardly constitutes a new invention. However, automation is seldom so simple, and in this complexity lies the prospect of patentability. The question is, how do you demonstrate that your client’s invention is more than mere automation?

The elements that underlie an automatic means rejection are straightforward: a manual activity, an automatic means, and a replacement of one for the other. In order to properly present an automatic means rejection, the examiner must be able to point to the manual activity from the prior art that forms its basis. If, however, the manual activity the examiner is alluding to does not exist in the prior art, the claimed activity may be patentable, whether it is performed manually or automated.

For example, suppose your client has an improved manufacturing process. The process uses sensors of varying voltages to monitor an assembly machine. The sensors measure vibration, pressure, and other characteristics. The information from these sensors provides a cheaper assembly process and extends the life of the assembly machine. If these parameters had never before been measured and used to monitor the manufacturing process, they would be patentable, irrespective of whether the sensors were adjusted automatically or required manual intervention. As such, an automatic means rejection would be improper. An examiner cannot recite automatic means for replacing a manual activity if the manual activity being automated does not exist in the prior art.

…

Check out this interesting case in today’s featured #ArgumentOfTheWeek.

Kudos to Mark Crockett, from Luedeka Neely Group PC , for exemplary work in drafting this winning office action response!

Let us know in the comments for which other obviousness rejection you would like to see an argument for.

P.S.
We aim to provide knowledge and resources to support #patent attorneys and agents through the prosecution cycle. Try our Arguminer software to find inspiring arguments from successful cases with the click of a button
https://iptoolworks.com/demo/

Also, check out:

https://iptoolworks.com/getting-out-of-autodrive-arguments-to-overcome-automatic-means-to-replace-manual-activity-in-obviousness-rejections/

#PatentProsecution #OfficeAction #Arguments #PatentRejection #Arguminer

#ArgumentOfTheWeek

The “#mentalprocess rejection has always been a #legal fiction and this can make the rejection difficult to overcome.

In this video, we share a case where the applicant overcame a 101 #rejection by focusing on the steps of the method that could not be performed by the human mind. This allowed the applicant to argue that even if the idea of estimating the value of a variable could be held in the human mind, the process recited in the claims could not be carried out by the human mind.

Kudos to Gene M.Garner II from Staas & Halsey LLP for exemplary work in drafting this winning office action response!

Let us know in the comments which #artunit you would like us to feature a successful argument from next.


P.S.
We aim to provide knowledge and resources to support #patent attorneys and agents through the prosecution cycle. Try our Arguminer software to find inspiring arguments from successful cases with the click of a button—tool link in comments.

Also, check out:
https://iptoolworks.com/into-the-future-responding-to-patent-office-actions-in-the-ai-and-simulation-modeling-arts/

#PatentProsecution #OfficeAction #Arguments #PatentRejection #Arguminer
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A claim that recites a physical process is much more likely to overcome a rejection under § 101.

For example, it is much more difficult for an examiner to reject a claim as reciting “mental steps” when the claims include physical processes.

This argument was used in U.S. Patent Application Serial No. 16/023,699. This application is directed to a process for mitigating soil compaction in agriculture.

Check out this interesting case in today’s featured #ArgumentOfTheWeek.

Kudos to Douglas J. Duff, intellectual property counsel at Deere & Company, for exemplary work in drafting this winning office action response!

Let us know in the comments which #ArtUnit you would like us to feature a successful argument from next.

P.S.
We aim to provide knowledge and resources to support #patent attorneys and agents through the prosecution cycle. Try our Arguminer software to find inspiring arguments from successful cases with the click of a button
https://iptoolworks.com/demo/

Also, check out:
https://iptoolworks.com/office-action-responses-from-automated-vehicle-systems/

#PatentProsecution #OfficeAction #Arguments #PatentRejection #Arguminer

In this video, William Morriss talks about what to do after receiving a final rejection for your patent application.

He covers the Pros and Cons of the following possible actions:
– RCE (Request for Continued Examination)
– Getting a new examiner
– Appeals

Let us know your thoughts and opinions around this in the comments section.

Don’t forget to Like | Share | Subscribe to the channel for helpful patent prosecution videos.

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At IP Toolworks, we created the Arguminer software to allow you to quickly search and analyze publicly available file wrappers. You can find successful responses prepared by other attorneys that match your examiner, rejection type, or other criteria unique to the office action you are responding to.


Get on a demo session now: https://iptoolworks.com/demo/


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00:14 Everything about ‘after final practice’


00:46 Preface:
RCE (Request for Continued Examination)
Getting a new examiner
Appeals


01:12 RCE (Request for Continued Examination)


01:23 Example: Why do you file an RCE despite it being a pain?


02:24 What is the best way to file an RCE?
Option 1: File an RCE
Option 2: Submit it as an amendment after final


02:45 Why did I feel amendments after final is not a good option?


03:26 Why amendments after the final can be helpful?


06:20 Subset of abandonment


06:44 Why don’t people want to go through an appeal?


06:52 Is it possible to get a new examiner? Can you do so reliably?


09:39 If you need a new pair of eyes, appeals are a great way to go.


10:32 The most appropriate way to deal with final rejection is to appeal


10:56 Mechanics of appeal


12:13 In appeal, you have a good deal of control


12:58 Think through the organization of an appeal


13:57 Examiner might shift the ground of rejection while responding




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How to Write a Winning Patent Office Action Response | USPTO
https://iptoolworks.com/patent-office-action-response-uspto/


5 Anti-Alice Arguments from Responses that Worked
https://iptoolworks.com/5-anti-alice-arguments-from-responses-that-worked/


Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide
https://iptoolworks.com/office-action-responses-mpep-vs-arguminer/


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Disclaimer: The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.

Under U.S. Patent law, the term “inventor” is defined as an “individual” or individuals” who “invented or discovered the subject matter of the invention.

Still, the debate is ON on AI inventorship.

Let’s hear it from William Morriss as he breakdown –
State of AI inventorship
What does it mean for people seeking protection across jurisdictions?

If you found the video helpful, LIKE| SHARE and don’t forget to subscribe for more such videos on patent prosecution.


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Thaler v. Commissioner of Patents (AU): https://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/single/2021/2021fca0879

Thaler v. The Comptroller General of Patents, Designs and Trade Marks (UK): https://www.bailii.org/ew/cases/EWHC/Patents/2020/2412.html

Thaler v. Hirschfeld (US): https://artificialinventor.com/wp-content/uploads/2021/09/20210902-Dkt.-33-Memorandum-Opinion-3.pdf

USPTO study: https://www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf

MPEP 213.02: https://www.uspto.gov/web/offices/pac/mpep/s213.html#ch200_d1ff72_1b289_213

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00:16 Can AI (Artificial Intelligence) be an inventor on a patent application?

00:28 Overview:
State of AI inventorship
What does it mean for people seeking protection across jurisdictions?

02:29 Case: Thaler v Commissioner of Patents

03:44 Case: Thaler v. Hirschfeld (US)

03:44 In US law, you can not have AI as an Inventor

04:52 Case: Thaler v. The Comptroller General of Patents, Designs, and Trademarks (UK)

06:56 To claim priority in the US, you have to have the same applicant
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06:58 MPEP 213.02

09:30 Know the inventorship rules in your jurisdiction

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How to Write a Winning Patent Office Action Response | USPTO
https://iptoolworks.com/patent-office-action-response-uspto/


5 Anti-Alice Arguments from Responses that Worked
https://iptoolworks.com/5-anti-alice-arguments-from-responses-that-worked/


Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide
https://iptoolworks.com/office-action-responses-mpep-vs-arguminer/


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Disclaimer: The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.

The #USPTO is seeking comments from the public regarding the impact of patent eligibility jurisprudence in the United States since the Supreme Court’s 2016 decisions in Mayo and Alice and subsequent Federal Circuit decisions applying the Supreme Court’s legal framework.

The USPTO will use the responses to prepare a report on how current jurisprudence may have affected U.S. investment and innovation.

William Morriss, the cofounder of IP Toolworks, answers some of the questions.

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Important Highlights

00:37 Impact of jurisprudence on investment and innovation

05:19 3 pages of obviousness and 15 pages of eligibility

08:48 Ability to obtain financing from investors or financial institutions

Watch the video and share your opinions around the questions in the comment section.

#Section101 #Patent #Eligibility #PatentRejections #SoftwarePatents
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Links:
Patent Eligibility Jurisprudence Study
https://www.federalregister.gov/documents/2021/07/09/2021-14628/patent-eligibility-jurisprudence-study

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How to Write a Winning Patent Office Action Response | USPTO
https://iptoolworks.com/patent-office-action-response-uspto/

5 Anti-Alice Arguments from Responses that Worked
https://iptoolworks.com/5-anti-alice-arguments-from-responses-that-worked/

Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide
https://iptoolworks.com/office-action-responses-mpep-vs-arguminer/

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At IP Toolworks, we created the Arguminer software to allow you to quickly search and analyze publicly available file wrappers. You can find successful responses prepared by other attorneys that match your examiner, rejection type, or other criteria unique to the office action you are responding to.

Get on a demo session now: https://iptoolworks.com/demo/
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00:20 Patent eligibility jurisprudence study by the USPTO

00:37 Impact of jurisprudence on investment and innovation

01:35 Impact in the United States

02:45 Using the Arguminer software

05:19 3 pages of obviousness and 15 pages of eligibility

05:50 Innovation is absolutely secondary

06:21 Writing such a detailed well-thought-out response is costly

06:48 Section 101 places a premium on legal argumentation

07:10 Elevates draftsman and lawyer’s work over innovator’s work

07:46 The design choice is reasonably intuitive

08:18 Innovators lack knowledge about updated eligibility guidance (2019)

08:38 Increased cost, increased uncertainty, and more emphasis on the legal side than on innovation

08:48 Ability to obtain financing from investors or financial institutions

09:40 Getting investment in the technologies dealing with section 101 is difficult

10:13 How the current state of patent eligibility jurisprudence in the United States affects the public

10:44 Decreases the availability and increases the cost of software-implemented inventions

12:48 Current eligibility jurisprudence discourages public from meaningfully engaging with the patent system

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Disclaimer: The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.

Avoiding Alice’s second prong can substantially improve your chances of allowance.

The test’s second prong, which asks whether the invention includes substantially more than the ineligible subject matter, is highly subjective. Therefore, qualifying under the first prong should be your first, strongest, and best thought-out argument.

This week’s argument was used in an application for “Humanized Antibodies”. The application was filed in 2016 and issued in 2020. Prior to allowance, the applicant received a rejection under #§101 on the ground that the claimed invention comprised products of nature.

In response, the applicant amended the claims to clarify that the claimed invention included a humanized antibody from a non-human donor.

The examiner had to allow the claims in the end.

Check out this interesting Argument in today’s featured #ArgumentOfTheWeek.

Kudos to Elizabeth M. Rohlfs from Pfizer Inc for exemplary work in drafting this winning office action response!

Let us know in the comments which #ArtUnit you would like us to feature a successful argument from next.


P.S.
We aim to provide knowledge and resources to support #patent attorneys and agents through the prosecution cycle. Try our Arguminer software to find inspiring arguments from successful cases with the click of a button—tool link in comments.

#PatentProsecution #OfficeAction #Arguments #PatentRejection #Arguminer

Lifelong learning is an indispensable tool for every career and organization.

In this video, William Morriss, cofounder of IP Toolworks, shares his personal thoughts and experiences around certain things that he wishes he knew before starting with his own company.

This video is definitely a crash course for all the entrepreneurs out there.

Leave your questions and opinions in the comments below. Don’t forget to like, share, and subscribe!
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At IP Toolworks, we created the Arguminer software to allow you to quickly search and analyze publicly available file wrappers. You can find successful responses prepared by other attorneys that match your examiner, rejection type, or other criteria unique to the office action you are responding to.

Get on a demo session now: https://iptoolworks.com/demo/
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00:28 Arguminer: Patent Prosecution Software

01:05 Five things I wish someone told me before I founded IP Toolworks

01:31 #1 The difference between getting enthusiastic feedback and a paying customer is tremendous.

03:39 #2 Some things take time

04:54 If you are going to fail fast in a slow industry, you will fail, period.

05:53 #3 Make sure your video conferencing platform is in perfect order

07:16 #4 Marketing can be transformative

08:56 #5 Know your niche
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How to Write a Winning Patent Office Action Response | USPTO
https://iptoolworks.com/patent-office-action-response-uspto/

5 Anti-Alice Arguments from Responses that Worked
https://iptoolworks.com/5-anti-alice-arguments-from-responses-that-worked/

Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide
https://iptoolworks.com/office-action-responses-mpep-vs-arguminer/

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Disclaimer: The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.

Yu Zhang alleges Apple, and Samsung cell phones with dual-lens cameras infringe U.S. Patent No. 6,611,289, “Digital Cameras Using Multiple Sensors with Multiple Lenses.” It is a subject matter eligibility case.

In this video, William Morriss, patent attorney and cofounder of IP Toolworks, shares his opinion around the same.

He also highlights the uncertainty in prosecution in this case.

Leave your questions and opinions in the comments below. Don’t forget to like, share, and subscribe!
———————————————————————————————————————–
At IP Toolworks, we created the Arguminer software to allow you to quickly search and analyze publicly available file wrappers. You can find successful responses prepared by other attorneys that match your examiner, rejection type, or other criteria unique to the office action you are responding to.

Get on a demo session now: https://iptoolworks.com/demo/

———————————————————————————————————————–
00:19 Case: Yu and Zhang v. Apple and Samsung

00:21 It is a subject matter eligibility case

00:29 Case background

00:57 The bigger problem: obsolete patent office guidelines

01:55 Uncertainty in prosecution

02:09 Genuine divergence in the way 101 is treated in court v. at the patent office

03:15 Example: Cleveland Clinic Foundation v. True Health

04:02 Examiners do listen to things, even if it is not in the MPEP

04:50 Explain the rules, then apply the rules

05:10 Approach to deal with rule dilemma

05:45 Case 14/834,642 https://f.hubspotusercontent10.net/hubfs/2856060/14834642.pdf

06:47 Be very cognizant of what examiners have done in their cases

07:52 Arguminer software helps you find responses that have worked in similar cases

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How to Write a Winning Patent Office Action Response | USPTO
https://iptoolworks.com/patent-office-action-response-uspto/

5 Anti-Alice Arguments from Responses that Worked
https://iptoolworks.com/5-anti-alice-arguments-from-responses-that-worked/

Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide
https://iptoolworks.com/office-action-responses-mpep-vs-arguminer/

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Disclaimer: The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.

American Axle & Manufacturing, Inc. v. Neapco Holdings LLC is a reasonably interesting case because it applies 101 to a non-software domain. Everyone is interested in the Supreme Court’s decision.

But will the Supreme Court’s decision in favor of American Axle make the scenario better or worse?

Let’s find out.

In his latest video, William Morriss, cofounder of IP Toolworks, talks about different possibilities of what could happen in the case.

Leave your questions and opinions in the comments below. Don’t forget to like, share, and subscribe!
———————————————————————————————————————–
At IP Toolworks, we created the Arguminer software to allow you to quickly search and analyze publicly available file wrappers. You can find successful responses prepared by other attorneys that match your examiner, rejection type, or other criteria unique to the office action you are responding to.

Get on a demo session now: https://iptoolworks.com/demo/

———————————————————————————————————————–
00:19 American Axle & Manufacturing, Inc. v. Neapco Holdings LLC

00:25 Section 101 in a non-software domain

00:47 All the eyes are on the Supreme Court’s decision

01:42 Things may get worse if the decision favors American Axle

02:33 How bad is the scenario compared to Alice?

03:18 Section 101 – Ambiguous, Amorphous, Unpredictable

04:04 Alice/Mayo test can be applied to other types of inventions

04:36 The drawback of American Axle: The claims were directed to the law of nature

06:20 What are the different possibilities for the outcome?

07:20 Maybe the chaos will help in applying 101 rationally

08:00 Broadest reasonable interpretations

08:24 Section 101, if applied to different areas, can help the Federal Circuit establish eligibility

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How to Write a Winning Patent Office Action Response | USPTO
https://iptoolworks.com/patent-office-action-response-uspto/

5 Anti-Alice Arguments from Responses that Worked
https://iptoolworks.com/5-anti-alice-arguments-from-responses-that-worked/

Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide
https://iptoolworks.com/office-action-responses-mpep-vs-arguminer/

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Disclaimer: The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.

Here we are, with our third and final video of our series – “Drafting applications to account for 101 issues.”

Before we proceed, here is a small recap of what happened in Part 1 & 2.
William Morriss took a cynical approach to deal with section 101 issues in part 1 and explained why the cynical approach does not make sense.

In case you missed it, here are the links to the same👇
Part 1: https://youtu.be/yE3CjnUsamM
Part 2: https://youtu.be/cnGkco0aBLM

In the final part, William synthesizes parts 1 and 2 to share his recommendation on avoiding 101 without being cynical.

He also picks some compelling case examples to make his point.

Go ahead and watch the video to get a full and clear understanding of drafting applications to account for 101 issues.

Leave your questions and opinions in the comments below. Don’t forget to like, share, and subscribe!
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At IP Toolworks, we created the Arguminer software to allow you to quickly search and analyze publicly available file wrappers. You can find successful responses prepared by other attorneys that match your examiner, rejection type, or other criteria unique to the office action you are responding to.

Get on a demo session now: https://iptoolworks.com/demo/
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00:29 Recap – Part 1: A cynical approach to section 101

01:19 Recap – Part 2: Why is the cynical approach wrong?

01:37 Part 3: Synthesizing Parts 1 & 2 Part 2

02:12 My recommendation on avoiding 101 without being cynical

02:38 Ask – What else can you use the invention for?

03:18 Ask – Why has no one done this before?

04:14 Hypothetical example: Invention incorporating data into forms

04:27: Content Extraction and Transmission vs. Wells Fargo Bank

06:21: Aatrix Software v. Green Shades Software

07:23 What if you can’t avoid section 101?

08:00 Even more “DETAILS.”

10:20: Work the dependent claims

10:27: Berkheimer Memorandum

10:54 Detail, detail, and detail.

11:11 Matching claims against USPTO examples: less reliable but a good idea.

11:36: Cleveland Clinic v. True Health Diagnostics

11:47: Always in fashion

12:06: You can do both

12:51 New people coming in often means new guidance.

13:15 What to neglect? What to focus on? Details or Guidance?

13:29 Final Comments on this series: Drafting Applications to account for 101 issues
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How to Write a Winning Patent Office Action Response | USPTO
https://iptoolworks.com/patent-office-action-response-uspto/

5 Anti-Alice Arguments from Responses that Worked
https://iptoolworks.com/5-anti-alice-arguments-from-responses-that-worked/

Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide
https://iptoolworks.com/office-action-responses-mpep-vs-arguminer/

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Disclaimer: The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.

Part 2: Why the cynical approach is not the best approach to take when dealing with section 101?

Recap:
William Morriss, Patent Attorney and Co-founder at IP Toolworks, share his exciting strategies and methods of drafting Applications to account for 101 issues.

To do that, he has created 3 video series around the same. Here is an overview of it:
Part 1: A very cynical approach to Section 101
Part 2: Why this cynical approach is not the best approach to take
Part 3: Synthesize 1st & 2nd part to come with an effective plan

Leave your questions and opinions in the comments below. Don’t forget to like, share, and subscribe!
————————————————————————————————————————-
At IP Toolworks, we created the Arguminer software to allow you to quickly search and analyze publicly available file wrappers. You can find successful responses prepared by other attorneys that match your examiner, rejection type, or other criteria unique to the office action you are responding to.

Get on a demo session now: https://iptoolworks.com/demo/
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00:26 Series on Drafting Applications to account for 101 issues

00:36 Recap Part 1: Cynical approach for the case

01:27 Why the Cynical approach does not make sense?

01:32 The Cynical approach has two incorrect premises

01:41 Cynical Premise #1: The rules are meaningless

02:27 Mentioning low-level implementation details of an invention is reliable

02:41 Case: Berkheimer v. HP Inc

04:01 Case: Finjan, Inc. v. Blue Coat Systems, Inc.
http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2520.Opinion.1-8-2018.1.PDF

04:50 Low-level details can get you over patent eligibility

05:30 Instead of being cynical, understand the rules

06:24 Cynicism does not get you far, especially if you already found the 101

07:16 Cynical Premise #2: You opt-out

07:46 What could be a more reliable approach?

08:56 Case: American Axle & Manufacturing, Inc. v. Neapco

09:35 Computers at their base are mathematical

10:11 More abstract does not solve the problem and might raise other problems

12:20 A cynical approach might help you in 101 but gets you in trouble in 102 & 103

12:48 There are many opportunities to tweak things and make things clearer

13:35 Preface to Part 3: Synthesizing part 1 & 2 to come up with a logical approach

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How to Write a Winning Patent Office Action Response | USPTO
https://iptoolworks.com/patent-office-action-response-uspto/

5 Anti-Alice Arguments from Responses that Worked
https://iptoolworks.com/5-anti-alice-arguments-from-responses-that-worked/

Office Action Responses | MPEP VS Arguminer | Book VS Practical Guide
https://iptoolworks.com/office-action-responses-mpep-vs-arguminer/

————————————————————————————————————————-
Disclaimer: The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.