The highly watched case from the Massachusates Supreme Court absolves an IP Boutique law firm of legal malpractice claims from representing competing clients in the same technical area.  

Sometimes a great invention does not fit into the traditional categories understood by patent attorneys. Consider improvements that do not necessarily make an advancement to a single product, but rather to a group of products. This may include a new component design that enables different sizes of a product to be made more efficiently with…

In a recent case (Inphi Corp. v. Netlist) the Court of Appeals for the Federal Circuit reviewed the standard for determining whether a claim can be amended to add a negative limitation. The CAFC confirmed the rule to evaluate whether a negative claim limitation is supported under Section 112 involves determining whether the specification describes…

When presented with a restriction between groups, one factor to consider in making an election is how to maximize arguments for an eventual petition, if needed.  When electing between groups where the scope of one group is within another group, it can be advantageous to elect the group that includes all of the elements (and…

An appeal can often result in re-opening prosecution, where the USPTO effectively admits the rejections were insufficient. Sometimes, even when the Examiner files an Answer to the appeal brief, certain rejections are withdrawn. Data from each art unit was sampled and the Answers tagged for any withdrawn grounds of rejection.

Examiners often dislike negative claim limitations. Adding a negative limitation without strict support in the specification can therefore be difficult. Further, it can be difficult to convince an Examiner that a prior art references fails to show a certain negative claim element. In a recent PTAB case, the Board confirmed that negative limitations must be…

USPTO examiners often like to cite an applicant’s previous applications against later filed applications. However, this also means that it is possible to access the inventors of the prior application and have them refute, through a declaration, misinterpretations of their disclosure. In some ways, there can be no better evidence of whether a prior art…

With the recent Supreme Court case of Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), many predicted a significant impact on prosecution before the USPTO, where Examiners would require applicants to further amend claims by pointing out potential clarity issues. In a recent PTAB case, the Board made clear that simply alleging…

A Freedom of Information Act (FOIA) request was filed asking for a list of the Serial Numbers of all publicly available applications where an appeal brief was filed by the Applicant, the brief filed between March 1, 2014 and March 1, 2015, including an indication of whether prosecution was re-opened.  The data is in and…

When an Examiner twice or finally rejects an application, the applicant has the right to appeal to the Patent Trial and Appeal Board (PTAB).  This enables the applicant to have a panel of three administrative law judges (ALJs) review the rejection to determine if it is proper.  Unfortunately, the USPTO effectively denies such review in…