It is always interesting to read the prosecution history of a case where the inventor is a patent attorney, and especially where the inventor is the applicant as well. Today we have an example where the attorney is the inventor, applicant, and further practicing at a large law firm. If the examiner thought that they…

Read about a case where the USPTO finds fault with an expert declaration because it allegedly has the wrong verb tense.

Be careful with loose language in your arguments that might enable the PTAB to affirm in a way that side steps important issues.

More on 101 “experts” at the USPTO

The USPTO is denying they have Section 101 experts at the same time as these experts are conducting interviews and providing guidance to examiners. Why?

An early appeal before the examiner has had a chance to “better” the rejection can sometimes end the case without ever having to deal with those “better” rejections.

Do the quality experts get involved with Appeals? Do they weed out bad rejections or rubber stamp the examiners?

To emphasize or not in your patent prosecution arguments. While we do not answer this question, this post illustrates how the applicant should be careful – it can be dangerous to emphasize language that in a way that the other side can use the emphasis to their advantage.

Know the rules for what it takes to retain flexibility in the claim scope.

Read about motivation to combine and an exception that can swallow the rule.