News & Analysis as of

Patent Applications Patent Prosecution Claim Construction

Wolf, Greenfield & Sacks, P.C.

Broadening Your (Patent) Protection

In the fast-paced world of innovation, inventors sometimes realize that their patents do not fully protect their inventions until after the patent issues. If the patent family has an application still pending at the patent...more

Lathrop GPM

Significant Federal Circuit Decision Redefines Prior Art Requirements

Lathrop GPM on

Last week a remarkably interesting Federal Circuit case was decided concerning whether an asserted reference was properly shown to qualify as prior art in the rejection of a pending patent application. The pending application...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings.  While the USPTO has made incremental improvements in its...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Procopio, Cory, Hargreaves & Savitch LLP

The Continued Impact on Patent Prosecutors and Litigators of the Federal Circuit’s Expanded Treatment of Means Plus Function...

In a new precedential Federal Circuit decision, Kyocera Senco Industrial Tools Inc. v. ITC, that impacts both patent prosecutors and litigators, the court again demonstrated the reach of its recent expansion of language that...more

Mintz - Intellectual Property Viewpoints

Ex parte WILHELM HEINE: PTAB Rejects Examiner’s Unreasonable Claim Construction

During patent prosecution, Examiners often liberally apply the broadest reasonable interpretation standard in rejecting claims. When responding to these rejections, it is important to remember that there are limits to an...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

The Goods on IP - July 2018: Clearing up Conjunctive Claim Construction: PTAB Guidance on the Use of "At Least One Of"

The phrase “at least one of” is used in claims to indicate selection from a group of elements that follows the phrase. When used, practitioners may grapple with whether “at least one of A and B” or “at least one of A or B” is...more

Jones Day

PTAB Reversed For Giving Process Step In Product Claims No Weight

Jones Day on

Whether a process step in product claims is afforded patentable weight has been an issue gaining more attention recently. The Federal Circuit weighs in on the topic in In re Nordt Dev. Co., LLC, No. 2017-1445, 2018 WL 774097...more

Jones Day

Patent Prosecutors Beware: Earlier Publication Anticipates Broad Claims of Continuing Application

Jones Day on

A recent written decision by the PTAB in connection with an inter partes review (IPR) proceeding is a reminder to patent prosecutors to carefully consider the possible construction of claim terms in a continuation or...more

Womble Bond Dickinson

Negative Limitations in a Patent Claim – Broad or Narrow?

Womble Bond Dickinson on

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

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