On its face, the policy argument for the Patent Office’s use of the Broadest Reasonable Interpretation (BRI) when examining patent claims makes sense. Unfortunately, there are fundamental problems with this line of reasoning. Some of the problems result from practical implications while others come from logical gaps in the policy arguments. 

The Federal Circuit finds a data-structure related software invention non-abstract under the first part of the Alice patent eligibility test because it is directed to a specific implementation of a solution to a problem in the software arts. Key to the decision was the use of a specification drafting technique that has received widespread critiscim…

The USPTO recently issued still further new guidelines on subject matter eligibility with respect to 35 USC Section 101.

In a recent decision, the Federal Circuit found a hair cutting method patent ineligible.  While some will read this case as saying that hair cutting methods are not patentable, that would be a mistaken conclusion and would further miss a key underlying issue at play in this case.

With the significant increase in government fees at the US Patent and Trademark Office, applicants are increasingly sensitive to piecemeal prosecution. A contributing factor that cuts against compact prosecution is incomplete Office action rejections, but Applicants do have a recourse.

While all oral hearings used to occur in Washington (Alexandria), the USPTO and PTAB have expanded hearing locations to satellite offices including Detroit, Michigan, Denver, Colorado, Silicon Valley (San Jose), California and Dallas, Texas. Applicants should take note of the opportunity to request specific locations in order to reduce the burden of oral proceedings

The statute authorizing means claims simply authorizes the use of a certain claim type (e.g., means claims) and defines how claims that fall under the section are interpreted. As such, it cannot form the basis of a rejection by an Examiner, as confirmed in a recent PTAB case.

In Shaw Industries, the Federal Circuit was faced with the interplay of judicial review, post-grant review institution decisions, estoppel, and the Redundancy Doctrine at the PTAB. Judge Reyna issued a well-reasoned concurrence that took the Patent Office to task for its myopic approach. 

Patent Examiners often use the theory of “design choice” in formulating rejections. The typical situation is where one or more primary references show all of the elements of a claim except for what the Examiner feels is a minor modification, for example a certain structural feature such as a taper. These rejections can be particularly…

No one likes double standards, especially when those in power blatantly apply them. A recent PTAB decision denying a motion for joinder illustrates reasoning that should be more broadly and fairly applied by the USPTO.