Home
blog
About
Speaking Engagements
Contact
Resources

Mr. IP Law

Home
blog
About
Speaking Engagements
Contact
Resources
April 18, 2022
John Russell
The Illusion of Quality at the USPTO

The Illusion of Quality at the USPTO - its clear from the USPTO’s very own explanation of the program.

The Illusion of Quality at the USPTO
March 21, 2019
John Russell
New Informative PTAB Decision on 101

A new informative decision on 101 from the PTAB (with a dissent).

New Informative PTAB Decision on 101
January 28, 2019
John Russell
System Diagnostics and Section 101

The PTAB confirms in a Honda appeal that system diagnostic inventions do not need to perform an action in response to the diagnostic determination to be patent eligible.

System Diagnostics and Section 101
November 28, 2018
John Russell
Amicus Brief Regarding Prosecution Re-opening ...

Read the brief here!

Amicus Brief Regarding Prosecution Re-opening at the Federal Circuit
July 16, 2018
John Russell
PLEA FOR YOUR HELP

The USPTO is Breaking the Law - Read how and lend your support to the cause.

PLEA FOR YOUR HELP
John Russell
October 31, 2017

Halloween Prior Art Appeal at PTAB

John Russell
October 31, 2017
Halloween Prior Art Appeal at PTAB

Halloween costume prior art used by an Examiner rejected by the PTAB.

Comment
John Russell
October 23, 2017

Rolls-Royce Uses Declaration Evidence To Win Patent Appeal

John Russell
October 23, 2017
Rolls-Royce Uses Declaration Evidence To Win Patent Appeal

The distinction between a structural element and a product-by-process element can be fine.

Comment
John Russell
October 19, 2017

FOIA Follow-Up... More on Improper Restrictions

John Russell
October 19, 2017
FOIA Follow-Up... More on Improper Restrictions

If the Examiner continues to apply the wrong restriction standard in a PCT National Phase application, you may be able to overcome the restriction with a straightforward petition.

Comment
John Russell
October 12, 2017

Knowing When To Petition

John Russell
October 12, 2017
Knowing When To Petition

Be careful in petitioning so as not to win a battle only to lose the war.

Comment
John Russell
October 5, 2017

Petitioning a Lack of Search Burden

John Russell
October 5, 2017
Petitioning a Lack of Search Burden

Apple knows how to petition improper restrictions that fail to provide any reasoning supporting a search burden

Comment
John Russell
September 28, 2017

The power of Only

John Russell
September 28, 2017
The power of Only

SAP saves their database data field retrieval patent with "only" in the claim.

Comment
John Russell
September 25, 2017

Mere Attorney Argument

John Russell
September 25, 2017
Mere Attorney Argument

On appeal, the PTAB dismisses GM's reasoning against an Examiner's rejection as "mere attorney argument."

Comment
John Russell
September 21, 2017

How the Sovereign Immunity Defense Could Change Tech Transfer Patent Ownership Structures

John Russell
September 21, 2017
How the Sovereign Immunity Defense Could Change Tech Transfer Patent Ownership Structures

The ideal technology transfer agreement looks much different now with the PTAB and State-owned University sovereign immunity defenses.  

Comment
John Russell
September 15, 2017

NVIDIA Calls out USPTO for Improper Reliance on Admissions

John Russell
September 15, 2017
NVIDIA Calls out USPTO for Improper Reliance on Admissions

The Office of Petitions loves to find admissions in petitions against restrictions, so be careful!

Comment
John Russell
September 11, 2017

All Prior Art Teachings of a Reference Must Be Considered

John Russell
September 11, 2017
All Prior Art Teachings of a Reference Must Be Considered

Don't let the Patent Office pull a fast one on you by expressly ignoring teachings in the prior art.

Comment
John Russell
September 5, 2017

Statistics and Appeal Strategies

John Russell
September 5, 2017
Statistics and Appeal Strategies

Be careful using examiner statistics when making decisions about whether to appeal - some stats are not always what they appear to be.

Comment
John Russell
September 1, 2017

Why the USPTO does not have to follow the Supreme Court (according to the USPTO)

John Russell
September 1, 2017
Why the USPTO does not have to follow the Supreme Court (according to the USPTO)

THE PTAB's interpretation of Section 112 could give examiners more freedom to make unreasonable rejections under a new precedential PTAB opinion.

Comment
John Russell
August 30, 2017

Remember the PPH

John Russell
August 30, 2017
Remember the PPH

Guest post by the Foreign Inbound team at McCoy Russell LLP on PPH requests.

1 Comment
John Russell
August 23, 2017

Design Patents and Provisional Applications

John Russell
August 23, 2017
Design Patents and Provisional Applications

Design and Provisional application filings require a thoughtful strategy and understanding of how priorities can and cannot be claimed. 

Comment
John Russell
August 10, 2017

Hindsight

John Russell
August 10, 2017
Hindsight

Remember not to let Examiners use the inventor's teachings as a basis for an obviousness rejection.

Comment
John Russell
August 7, 2017

Playboy Knocks Out Wireless A/V Patent

John Russell
August 7, 2017
Playboy Knocks Out Wireless A/V Patent

Even when claims use the term "means," that does not necessarily mean that they are "means plus function" claims. This new case may give patent prosecutors a few more tricks to pull out during prosecution of what might otherwise be a hopeless case.

Comment
John Russell
July 24, 2017

PTAB Double Talk

John Russell
July 24, 2017
PTAB Double Talk

A recent Board decision on Section 101 mixes up determining the proper claim scope with the "something more" question.

Comment
John Russell
July 17, 2017

Strategies for Making an Election Responsive to a Restriction

John Russell
July 17, 2017
Strategies for Making an Election Responsive to a Restriction

Learn how seemingly inconsequential decisions made in responding to restriction requirements dictates the course of prosecution for years to come.

Comment
John Russell
July 13, 2017

Conditional Limitations In Control System Claims

John Russell
July 13, 2017
Conditional Limitations In Control System Claims

Patent drafters beware - the PTAB has found a shortcut to ignore most every if-then controls-related invention if it so desires. Read the post to see some potential countermeasures.

Comment
John Russell
July 10, 2017

Multiple Patent Drafters Can Make a Better Patent Application

John Russell
July 10, 2017
Multiple Patent Drafters Can Make a Better Patent Application

Having multiple patent drafters contribute to your patent application can pay dividends in the long run.

1 Comment
Newer Posts
Older Posts
Back to Top
McCoy Russell LLP, 1410 NW Johnson St., Portland, OR, 97209, United Statesinfo@mccrus.com