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...
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 prepare wills for the orderly transition of our financial affairs to our loved ones. But as a patent practitioner, each of us has an obligation to care for our...
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...
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...
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...
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...
