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
Here is a technique for rapidly drafting claims, for a patent application. This is a brainstorming mechanism that works for one person, or two, or more, and uses a free-form drawing or diagram to both gather words and prompt...more
Here is an argument we are using in response to rejections under 35 USC §101 that allege the claims are directed to an abstract idea and are patent ineligible. This is useful in Office action responses, and appeals.
The...more
What are the dates to which prior art must adhere, in examination of claims in a continuation-in-part (CIP) nonprovisional patent application? Each claim in a CIP, whether independent or dependent, has its own priority date....more
There is no statutory requirement that formal logic be adhered to during examination of patent claims. Examiners and patent practitioners are free to use a wide variety of discussion and argument styles and topics, and these...more
Up to 20 claims, including three independent claims, are paid for in the standard filing fee for a US non-provisional patent application. Some clients prefer matching claims in the claim set, others prefer varied claims. ...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
A claim in a patent application or issued patent should express not only the building blocks of an invention but also the relationships among the building blocks. Understanding and expressing these relationships clearly in a...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