Latest Publications


Decreasing Ambiguity in Claims

A well-written claim should not be ambiguous. At least, that is one goal. Yet, language is full of imprecision, many words have multiple dictionary definitions, and ofttimes lengthy and complex grammatical constructions in...more

1/13/2015 - Claim Construction Legal Writing Patents

Claim Scope and the Actor(s) in a Claim

Scope of a claim and the number of actors in a claim are interrelated. Each of these affects what is claimed and whether this provides good claim coverage for the client. An apparatus claim is usually a single actor claim,...more

1/6/2015 - Claim Construction End-Users Patents

Challenging “Obvious to Try” during Patent Prosecution

Suppose your client’s patent application is rejected as allegedly obvious under 35 USC §103, and the Examiner cites one or more references and sets forth an “obvious to try” rationale in an Office action. Here are some tools...more

12/19/2014 - Office Actions Patent Applications Patent Examinations Patents

A Powerful Tool: Challenging Assertion during Patent Prosecution

Patent claims can be rejected, during patent prosecution, for a very large variety of reasons. A proper rejection is factually based. Examiners for the United States Patent and Trademark Office, and patent practitioners...more

9/2/2014 - Patent Litigation Patent Prosecution Patents USPTO

Inventions and the Ecosystem of Ideas

There are some striking parallels between inventions and living organisms, and between technology in a consumer marketplace and an ecosystem. Insights gained through the comparisons may be beneficial to inventors, companies,...more

8/13/2014 - Innovation Inventions Patents USPTO

Aftermath of the Supreme Court Ruling regarding Patent-Ineligible Abstract Ideas in Alice v. CLS Bank

Readers are likely aware that the Supreme Court of the United States has issued a ruling, in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL...more

7/16/2014 - Alice Corporation CLS Bank v Alice Corp Memorandum of Guidance Patent Litigation Patent-Eligible Subject Matter Patents SCOTUS Software USPTO

Negative Limitations In Claims – Useful Or Dangerous?

Patent practitioners and clients alike are understandably nervous about negative limitations in claims. Yet these do have usefulness, especially where there is close art. Negative limitations can properly be used to exclude...more

5/22/2014 - Patent Infringement Patent Litigation Patents

Functional Language in Claiming: Configured to, and Operable to

Functional language is often employed in claims in order to obtain a broader claim than one that recites purely structural limitations. The premise for this is that there is more than one way to perform a function. So, an...more

5/8/2014 - Functionality Patent Applications Patents

Apparatus for Delivering a Patent Application on April 1

In the spirit of Rube Goldberg (July 4, 1883-December 7, 1970, inventor, engineer, cartoonist), we present the following novel and useful invention. The purpose of the invention is to deliver a patent application on a...more

4/1/2014 - April Fool's Day Patents

Comments on 3/4/2014 USPTO “Guidance for Determining Subject Matter Eligibility…”

On March 4, 2014, the United States Patent and Trademark Office issued a memorandum and quick reference sheet on the “2014 Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of...more

3/14/2014 - Patent-Eligible Subject Matter Pharmaceutical USPTO

Patent Reform – Limiting the Number of Patents?

Proposals for reforming the patent system are popular topics these days. One of the ideas floating around is that the number of patents issued, or possibly the number of patent applications accepted, per year should be...more

2/27/2014 - Patent Reform Patents

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