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
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
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
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
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
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
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