While all oral hearings used to occur in Washington (Alexandria), the USPTO and PTAB have expanded hearing locations to satellite offices including Detroit, Michigan, Denver, Colorado, Silicon Valley (San Jose), California and Dallas, Texas. Applicants should take note of the opportunity to request specific locations in order to reduce the burden of oral proceedings

The statute authorizing means claims simply authorizes the use of a certain claim type (e.g., means claims) and defines how claims that fall under the section are interpreted. As such, it cannot form the basis of a rejection by an Examiner, as confirmed in a recent PTAB case.

In Shaw Industries, the Federal Circuit was faced with the interplay of judicial review, post-grant review institution decisions, estoppel, and the Redundancy Doctrine at the PTAB. Judge Reyna issued a well-reasoned concurrence that took the Patent Office to task for its myopic approach. 

Patent Examiners often use the theory of “design choice” in formulating rejections. The typical situation is where one or more primary references show all of the elements of a claim except for what the Examiner feels is a minor modification, for example a certain structural feature such as a taper. These rejections can be particularly…

No one likes double standards, especially when those in power blatantly apply them. A recent PTAB decision denying a motion for joinder illustrates reasoning that should be more broadly and fairly applied by the USPTO.

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,…