It is time to take a deeper look and derive or strengthen some strategies to argue for patentable subject matter eligibility during patent prosecution, now that the first round articles on the USPTO Memorandum April 19, 2018,...more
5/3/2018
/ Claim Construction ,
CLS Bank v Alice Corp ,
Guidance Update ,
Litigation Strategies ,
Mayo v. Prometheus ,
MPEP ,
Patent Examinations ,
Patent Prosecution ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Section 101 ,
Section 102 ,
Section 103 ,
USPTO ,
Young Lawyers
Claim terms are given a broadest reasonable interpretation (BRI) consistent with the specification, ideally. Occasionally, a USPTO examiner interprets a claim term in a manner different from what the applicant in a patent...more
Originally published in IP Watchdog on February 22, 2018.
Patent agents in the United States are authorized to practice in patent prosecution matters before the United States Patent and Trademark Office (“USPTO”). Such...more
During examination of claims in a patent application, claim rejections from the USPTO (United States Patent and Trademark Office) under 35 USC §102 and/or 35 USC §103 usually assert that one or more cited references show all...more
Part of the enjoyment of Halloween and Christmas is seeing the clever decorations and novelties people come up with for these two celebrations. But did you know, some of these are patented inventions? With (belated) Season’s...more
Negative limitations, using words like “not”, “without”, or “excluding” in a patent claim, understandably make patent practitioners and clients nervous. Generally, positive limitations are preferred and negative limitations...more
USPTO (United States Patent and Trademark Office) rejection of a patent claim, alleging the claim is not significantly more than an abstract idea under 35 USC §101, is a frequent and often frustrating occurrence during patent...more
A patent claim can be rejected for inherency over a reference. An inherent property cannot be claimed, even if that property was not known at the time a prior art composition was disclosed or prior art invention was made....more
Some inventions operate in a recursive or iterative manner. This could be so of a machine that repeats actions or functions on a single article or to produce multiple articles, or operates on data.
...more
What is in the preamble of a patent claim? And, can the contents of the preamble influence the claim examination process? Ever since the US Supreme Court ruling in Alice Corporation Pty. Ltd. v. CLS Bank International, et...more
Ever since the Supreme Court ruling on Alice Corporation Pty. Ltd. v. CLS Bank International, et al., patent practitioners have seen an historic increase in the number of 35 USC §101 “abstract ideas” rejections of patent...more
Patent claims are commonly understood to define the structure of an invention, and claim limitations should delineate the connections and relationships among claim elements. Occasionally, claims are rejected during...more
Patent prosecution involves one side arguing for, and another side arguing against, the validity of claims in a patent application. This takes the form of a written discourse, in which an Examiner for the USPTO (United...more
Patent claims that use so-called “nonce words” in lieu of means plus function language can be correctly construed as applying the equivalent of means plus function language under 35 USC §112, sixth paragraph, and can be...more
During patent prosecution, the US Patent and Trademark Office (USPTO) may reject claims in a patent application as being directed to an abstract idea as a judicial exception to patent eligible subject matter under 35 USC...more
It is commonly held that the doctrine of equivalents is lost when claim amendments are made during patent prosecution. That is, any claim amendment that is made during patent prosecution surrenders or gives up elements which...more
During the drafting process, claims in a patent application may be written, edited, revised, reviewed in-house, revised again, reviewed by a client, and revised yet again, or have some subset of these applied to it. But, is...more
Since the Federal and Supreme Court rulings in Alice Corporation Pty. Ltd. v. CLS Bank International, et al., we have seen some issued patents invalidated on the grounds of patent-ineligible subject matter directed to an...more
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
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