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…

While much has been said recently regarding Section 101 following Supreme Court cases like Alice, there is another type of Section 101 rejection sometimes used by Examiners when the invention is said to lack utility. 

Inventions must be non-obvious to qualify for patent protection. While there are many ways to argue obviousness, savvy attorneys like to find a way to use “teaching away” by the prior art. However, a recent case from the PTAB illustrates that a teaching away with respect to features not relevant to the proposed combination are…

Restriction requirements (or election of species) can significantly limit an Applicant’s ability for subsequent amendments. The limitations on amendments can severely limit and Applicant’s ability to distinguish prior art. Therefore, Applicants should be wary of restrictions that may have significant negative consequences for successful prosecution and develop a strategy for responding early in prosecution.

The Patent Trial and Appeal Board (PTAB) of the USPTO announced a new program focused on enabling small businesses to have their appeals expedited.  While this program may be useful in particular situations where speed is essential, there are some notable pitfalls for the unwary.  

As part of the requirement to limit patent applications to a single invention, the US Patent and Trademark Office sometimes issues restriction requirements citing differences among figures in an application.  One drafting tactic to minimize the ability for Examiner to make figure-based restrictions with regards to different aspects of a claimed method, is to utilize…

When the Supreme Court decided Alice, the USPTO took the matter to such an extent that it re-reviewed all allowed cases at that point that had not yet issued, and withdrew many applications. I reviewed many of the cases on the list to see how various Applicants were faring now, almost a year later. 

The Federal Circuit’s recent decision in Dynamic Drinkware confirms that the US patent system applies a very unique rule to the prior art effect of provisional applications.  Following from the Giacomini decision, the Federal Circuit confirmed that for the provisional application to be effective as prior art, not only does there need to be a…

The doctrine of “Analogous Art” places an additional requirement on prior art that it be either from the same field of endeavor, or reasonably pertinent to the problem solved by the invention. While examiners often assert that a prior art reference is still relevant even when it fails to solve the particular problem solved by the…