Patent Cooperation Treaty
14Oct
13Jun
A Quick-Look Introduction to the USPTO’s New Patent Public Search System
by James Cottone
On February 1, 2022 the United States Patent and Trademark Office announced the launching of their new Patent Public Search tool, a system designed to “provide more convenient, remote, and robust full-text searching of all U.S. patents and published patent applications.” The new system builds on the capabilities of their four existing search tools, namely the Public-Examiner’s Automated...
06Jul
Examiner Interviews by Video
by Ed Ryan
The Examiner interview is the cornerstone of effective patent prosecution. A short conversation can advance prosecution more effectively than reams of written response. You have the opportunity to cut past all of the bluster of the official record, to find out what the Examiner’s true motivations are for their rejections, and to avoid leaving a paper trail for...
10Jun
You can’t live forever
By Rich Baker
https://player.vimeo.com/video/575967758 As much as we don’t like to think about it, none of us will live forever. To protect our legacies, we can buy life insurance for our families, and...
30Oct
The Claim Contingency: How If-Then Language Can Sink a Patent
Edward Ryan Conditional language seems like a natural choice for describing computer-based inventions. The if-then structure mimics computer logic, allowing an algorithm to be translated directly into the claims. But, thanks to a counter-intuitive and inconsistently applied principle of claim interpretation, using this language can result in claim elements being ignored entirely--both in prosecution and in litigation. How are conditional claim limitations...
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...
13Aug
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...
13Jul
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...
13Jun
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...
14May
Avoiding a First-Action Final Office Action – May 14, 2018
By Ed Ryan There is a natural rhythm to patent prosecution, from non-final, to amendment, to final, to RCE, but that rhythm can be disrupted by an aggressive patent examiner. While the patent practitioner generally expects a new non-final Office Action after filing an RCE or continuing application, a first-action Final Office Action can sometimes result. This cuts off many of...