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
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
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
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
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
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
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
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
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
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