Obvious-type double patenting is a judicially created doctrine combating two potential evils – extension of patent term and division of ownership of the same invention.  While filing a Terminal Disclaimer is often an easy solution, some start-ups may be surprised when this option is not available to them.  

One area that is a constant headache for clients is restriction requirements from the USPTO. Clients often have a hard time and feel that they are being put through the ringer by an overly-bloated bureaucracy.  On the other side, Examiners often have limited time to examine disparate claim sets in a single application.  In any…

The discussion of Exemption 7(A) is continued in the context of FOIA denials by the USPTO, particularly with regard to whether the USPTO can prove that there would be harm in releasing publically available information about Examiners actions. 

Previous posts have discussed some of the ways the USPTO tries to deny FOIA requests, citing Exemption 6 for example. Another exemption the USPTO often cites is Exemption 7(A).  In one example where I was requesting certain public records, an appeal was required explaining why the USPTO FOIA Office’s refusal to disclose the requested records…

Restriction requirements (or election of species) are issued by the USPTO when the Examiner determines that there are multiple and/or distinct inventions claimed.  The results is that an Applicant is required…

A previous post illustrated the USPTO’s use of Exemption 6 to deny FOIA requests and one reason why such reasoning is improper (i.e.,  that the requested documents did not meet the threshold for the type of information protected by Exemption 6). Here, some of the additional requirements of Exemption 6 are analyzed with regard to whether there is any protectable privacy interest in public…

Unfortunately, most examiners never experience dealing with the USPTO as an inventor. However, there is at least one former examiner who is now an inventor and representing himself pro se before the Office with respect to an invention for a Handle for Tablet Computers.  So far, the inventor has had to use every bit of…

Patent prosecution before the USPTO is governed by numerous rules that limit an Applicant’s ability to take certain actions, such as amending the claims.  A Final Rejection severely limits an Applicant’s right to amend, and thus sometimes there are disputes as to whether a rejection is properly made final.  

Medieval scholars purportedly used to debate questions such as how many angels can dance on the head of pin. Patent attorneys are currently debating a similar question, which is whether an invention is an abstract idea.  The USPTO has just issued new guidelines to help answer the question.  

The National Inventor Hall of Fame inducts a class of inventors every year to honor their breakthrough inventions.  The inductees typically have far reaching inventions that have profound impacts on the world.  On one of my more recent visits to the museum, I was reading about one of the inventions honored at the museum and…