Patent Preparation and Prosecution

Software Patentability- The Federal Circuit Giveth . . . and Taketh Away

In 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…

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New USPTO Rules for 3rd Party Prior Art Submissions Take Effect on September 16, 2012

In 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…

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The Dangers of “Stuffing” Your Patent Applications with Undeveloped Ideas

Many 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…

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Industry Spotlight: So You Want to Patent a Medical Device?

  We 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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Defending the Patent Case: Applying KSR v. Teleflex

In KSR v. Teleflex, the Supreme Court described numerous reasons for combining or modifying prior art references in an obviousness analysis.   The Court also made clear that these reasons need not be explicitly set forth in the prior art references themselves.  In particular, the Court stated that “As our precedents make clear, however, the [obviousness]…

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Patenting Strategies: Before You Appeal the Examiner’s Final Rejection . . .

Once a USPTO examiner issues a “final” rejection against your patent application, your options become limited. They include 1) filing a Notice of Appeal to the Board of Patent Appeals & Interferences, 2) filing a Request for Continued Examination (“RCE”), 3) abandoning the application (possibly in favor of a continuation application), and 4) making amendments…

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Correcting the Stated Inventorship on a U.S. Patent or Application

  The law of inventorship is not too difficult to state but can be very difficult to apply in practice.  In general, only those individuals who contributed to the conception of the claimed invention in a patent should be named as inventors.  However, this often raises questions about what the nature of the “contribution” should…

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Do You Need A Patent Search?

Patent applicants who are new to the patenting process often ask whether they need to do a patentability search prior to filing a patent application.  The answer is it depends.  Except in the case of applicants who are seeking to have the examination process expedited, the U.S. Patent & Trademark Office (“PTO”) does not require…

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Do You Know What You’re Looking for? – Clarifying Your Patenting Goals

Before you begin spending money on the patenting process, it is important to clarify what you hope to achieve with patents.  Too many times, we have encountered clients who dove into the process without a clear understanding of what they hoped to achieve, only to be disappointed at the results and the expense of getting…

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Have You Checked Your Pending Patent Applications Lately?

When is the last time you took a look at the claims of your patent applications that are still pending?  Was it when you filed the applications?  How long ago was that?  If you are waiting for a first office action from the U.S. Patent & Trademark Office, it may have been over two years…

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