Highlighting the important of design patents to the Outdoor industry, a group of outdoor gear companies filed an amicus brief with the Supreme Court in the Apple v. Samsung battle.

The Federal Circuit provides some much needed guidance on limitations in using "common sense" to support an obviousness rejection. 

I just returned from the 2016 summer OR show in Salt Lake City where I was invited to speak on intellectual property issues as they relate to the outdoor industry.

In a recent ex parte appeal to the PTAB (13/296,787), BMW challenged a rejection related to a way to utilize an electronic braking system upon actuation of an operative element (e.g., a parking brake)

In a recent IPR appeal at the Federal Circuit, the Court reviewed the Board's claim construction de novo and found that the Board improperly added an element to their Broadest Reasonable Interpretation (BRI) of the claim terms

In in re Magnum Oil Tools International, the Federal Circuit rejected a crafty approach by the USPTO to shift the burden to the patentee in proving non-obviousness in an IPR. 

The usually boring world of vehicle emissions has taken center stage recently with the revelation that VW employed "defeat device" software on its vehicles to game emission compliance tests. The recent lawsuits by New York and Massachusetts bring new details to light regarding VW's software. While not discussed in the media yet, patent filings by VW may give further insight as to what was really going on inside the company.

Find out why It may be prudent when drafting a US provisional application to include multiple dependent claims, and to include multiple dependent claims rewritten in paragraph form into the specification when drafting a regular US application (or a provisional). 

A design patent is found obvious by combining references to achieve a functional result, rather than an improved ornamental design.

Listing terms in a Markush group with "and" versus "or" can make a difference.

The Federal Circuit calls out the USPTO for employing a version of the fallacy of the undistributed middle, noting that just because each of a dog and a cat has four legs does not mean that it would be reasonable to conclude that a cat is a dog under the BRI.  

With the large increase in ex parte appeals at the USPTO, Appellants should take care to deal with Section 112 issues to avoid giving the Board an easy affirmance.

There can often be strong business incentives to protecting certain indicators on products.  However, claiming indicia can be problematic due to the printed matter doctrine and indefiniteness. In a recent appeal, the Proctor and Gamble Company struggled before the PTAB on this issue.

There is nothing inherently wrong with using the term "about" in a claim, as long as it is done properly and the claim scope is clear. In this case, the use of different decimal places coupled with "about" doomed the claims. 

A previous post discussed the issue of Design Choice and the theory the specification does not need to discuss any particular advantage for the missing limitation in the prior art. Here, an often uncited portion of the MPEP confirms that inherent advantages can even be added to the specification and do not constitute new matter. 

INRIX successfully appeals the rejection of a connected car inventions, winning based on the examiner's improper use of inherency. 

Chrysler narrowly avoids infringement by its pick-up truck bed storage compartment because its compartment is sufficiently visible.

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 in recent years.

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