Roles of Patents in Innovation (Abridged)

By Dan Krueger
Let me begin by dividing the patent pool into three segments: (1) patents that you alone can use; (2) patents you can use but not exclude others from using (e.g., public domain or nonexclusive license); and (3) patents you can't use. Roles in Innovation for Patents You Alone Can Use I. Providing a barrier to competition Patents are intended to create...

Never File a Continuation-in-Part

By Ed Ryan
While Continuations and Divisionals are common, Continuations-in-Part (CIPs) are an oft-forgotten, oft-misunderstood third option for continuing a patent family. Mixing features of Continuations and new filings, they present a temptation to practitioners who feel trapped by an inadequate disclosure and to inventors who have continued developing their invention after filing. However, CIPs have little to offer beyond what...

Defining the Posita: PTO Examiners Must Disclose the Resolution of the Level of Ordinary Skill in the Pertinent Art

By Gary R. Maze & Richard T. Redano
Examiners often combine references when asserting a claimed invention is obvious because a person of ordinary skill in the art would have reasons to combine prior art reference teachings.  They almost never discuss disclose who such a person is. In 1966, the United States Supreme Court, in Graham v. John Deere Co., announced four factors...

How can I file thee, PCT? Let me count the ways!

By Bruce Young
There are many different decisions that must be made as a part of filing a PCT application. This blog article will outline some of the decisions that you will need to make in determining how to file a PCT application for your client, and discuss some of the options that may be available to you. Many of the...