Author: LSE
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Conditional Limitations In Control System Claims
Patent drafters beware – the PTAB has found a shortcut to ignore most every if-then controls-related invention if it so desires. Read the post to see some potential countermeasures.
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Multiple Patent Drafters Can Make a Better Patent Application
Having multiple patent drafters contribute to your patent application can pay dividends in the long run.
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Petitions and Restrictions
Watching over your portfolio requires constant vigilance, including keeping the Office honest. This post explains how to petition improper restrictions without having to wait until they are made final.
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Written Description and Possession – the specification does not need to exclude items different from what is claimed
The Federal Circuit provides more guidance on the USPTO’s improper approach for determining whether an inventor has demonstrated “possession” of the claimed invention in the specification.
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Qualcomm wins Section 101 reversal for encoding scheme It is no secret that it is hard to win Section 101 reversals at the PTAB. With Federal Circuit cases like Electric Power Group, LLC, any data processing or data manipulation invention can be easily rejected. It is also hard to move a case forward after a…
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Re-opening Prosecution with a new Final rejection after an Appeal
How can an examiner re-open prosecution for a case after appeal, and then make the new rejection final?
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Ban on Offenstive Trademarks found Unconstitutional
Supreme Court affirms Federal Circuit in knocking down the USPTO’s ban on offensive trademarks.
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Who gets to use advantages of the invention to justify their position – the Applicant or the Examiner?
Advantages of your invention – how to turn the tables on an Examiner who tries to use them against you.
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Failing to take note and respond
Look out for this situation and avoid an RCE fee while having your amendments entered.
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Patent Prosecution and Tennis
Sometimes it is better to return the ball strategically than hit a winning shot.