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…

37 C.F.R. 1.2 confirms that business with the US Patent and Trademark Office is to be transacted in writing.  Sometimes, however, the Office of Petitions has direct discussions with Examiners, excluding the Applicant. 

In order to have a better understanding of how the USPTO decides petitions against restriction requirements, it is helpful to review a large number of such decisions.  However, there is no easy way to find or compile such decisions, other than going through serial numbers one by on on PAIR.  Therefore, I filed a FOIA…

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…