When examining patent applications, the USPTO generally applies the broadest reasonable interpretation to patent claim terms, including in post grant proceedings where the patent term has not yet expired.

How to best deal with Alice-based rejections from the USPTO is a complex task due in part to the generally difficult problem of applying the Supreme Court’s two-part test to individual cases. An approach is discussed utilizing a technical problem-solution approach based on recent guidance from USPTO training slides.

Alice-based Abstract Idea rejections are flooding patent applicants at the US Patent and Trademark Office. While the USPTO bears the burden of establishing a rejection, it is not clear what level of evidence and explanation is required for the Office to meet its burden. A recent PTAB case is analyzed that shows an example of…

The Federal Circuit today issued a shockingly broad decision in Synopsys, Inc. v. Mentor Graphics Corporation that affects the scope of power that the US Patent and Trademark Office can employ when deciding the critical question of patent validity in Post-Grant proceedings. The decision, written by Judge Dyk, considers not only the scope of the…

The issue of obviousness is at the heart of defining what is, and what is not, an invention. While examples at the extremes are relatively easy to find, many cases tend to lie somewhere in the fuzzy range between obvious non-patentable concepts and non-obvious inventions. Finding and presenting convincing arguments, one way or the other,…

Inventions are often solutions to technical problems. Truly appreciating an invention often involves understanding how the new features operate to solve problems with prior approaches and achieve advantages relative to those prior approaches. At the same time, patent drafting techniques should be used to avoid giving away, as admissions, the key recognitions that led to…

The Federal Circuit recently issued a precedential opinion (In re Urbanski) discussing the interrelationship between the issues of teaching away, the obviousness of modifying a reference that would render it inoperable for its intended purpose, and result-effective parameters.

The USPTO and the Federal Courts continue to invalidate patents under Section 101 based on a range of factual assertions, even when considering the issue under a Rule 12(b)(6) motion. Twombly and Iqbal have helped enable this shift. In Priceplay.com v. AOL, Facebook, and Google, the Babe’s famous contract negotiations involving a coin flip helped…

The Federal Circuit has issued another abstract idea decision in the context of a vehicle system for testing drivers. The opinion provides numerous hints and guidance as to facts that could have enabled the patent to survive. Those drafting and prosecuting patent applications, particularly in the autonomous or intelligent vehicle area, should take note of…

Winning a case before the USPTO’s Patent Trial and Appeal Board (PTAB) can be a long and arduous journey. Unfortunately, the case is then returned to the Examiner, who may still be inclined to try and deny the application by re-opening prosecution with new rejections. While such actions can be exceptionally frustrating, and whether or…