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
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
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
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
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
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 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
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
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