The U.S. Patent & Trademark Office (PTO) recently requested public comment on how applicants can improve patent quality. The PTO’s Notice describes possible procedures such as requiring applicants to correlate claim terms to the specification and state whether examples are intended to be limiting or merely illustrative and requiring applicants to provide glossaries of potentially…
Read MorePatent Preparation and Prosecution
Failure to take certain required actions can result in the abandonment of a U.S. patent application or issued patent. For example, if an office action is not replied to within six months of issuance or if an issue fee is not paid within three months of the issuance of a Notice of Allowance, a patent…
Read MoreAlthough the America Invents Act (AIA) was signed into law in September 2011, the “first inventor to file” provisions did not immediately take effect. However, they will take effect in less than two months. Are you ready? The shift to a first inventor to file system represents a significant change in U.S. Patent Law that…
Read MoreClients often want to know how long it will take them to get a patent. Of course, whether they get one at all will depend on whether their invention is novel and non-obvious as well as how broadly their claims are drafted. However, those questions aside, there is also the issue of how quickly the…
Read MoreGrowing up in a pre-cable TV world, I played a lot of games such as Monopoly, Clue, Life, Chutes & Ladders, Checkers, Chess and countless others. With all of the cases coming out about statutory subject matter in the last few years, I wondered under what circumstances games could be patented. As it turns out,…
Read MoreU.S. Patent Law requires that patent claims be sufficiently definite such that one of ordinary skill in the art could ascertain their metes and bounds. Accused infringers may seek to invalidate claims under 35 U.S.C. § 112, ¶ 2 if the claims are not definite. In considering such issues, the courts typically look at whether…
Read MoreIn a recent newsletter, we discussed CLS Bank Int’l, et al. v. Alice Corp. Pty. Ltd. (Case No. 2011-1301)(Fed. Cir. 2012) and the Federal Circuit’s efforts to provide guidance as to the patentability of software in the wake of the Supreme Court’s decisions in Bilski and Prometheus. The CLS decision sought to soften the blow…
Read MoreIn one of our recent posts, we discussed a technique (“poisoning the well”) that third parties can use to get the examiner who is handling a competitor’s patent application to consider prior art that is not currently of record. Instead of sending the prior art to the Patent Office, we recommended sending it to the…
Read MoreMany companies build an IP portfolio around particular products, and the portfolio evolves over time as new refinements and improvements to the original concept are developed. This sometimes raises the question of whether various different inventions should be consolidated into a single application or split into separate applications. One benefit to consolidation is that it…
Read MoreWe have had the pleasure of working with some inventors who have enjoyed huge success by developing cutting-edge medical devices. This is an area that many people want to break into because it can be very profitable. However, the medical device market is very competitive, and the players are sophisticated. In order to succeed,…
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