When I speak to foreign practitioners about US patent law, I am sometimes asked to teach them a trick.  It’s a great conversational idea, and the question is one I loved to answer in the past. These days, I have to explain that I don’t know many tricks.  What happened? If you look at magic…

The USPTO’s Electronic Priority Document Exchange (PDX) Program relieves Applicants of the burden of submitting certified copies of their priority documents.  Rather, the Applicant can simply submit the country in which the priority application was filed, its filing date, its serial number, and…

We recently saw a practitioner request feedback regarding a potential strategy under the After Final Consideration Pilot (AFCP) 2.0 Program.  The practitioner noticed that an AFCP 2.0 Request can be filed after filing a Notice of Appeal (NOA), as long as neither a Pre-Appeal Brief Conference Request…

In view of our continued emphasis on the importance of dependent claims during US patent prosecution, we often receive questions regarding what sort of features should be presented in a dependent claim set for US examination.  Because most of these questions are received from Japan, we will con…

We posted our February 2023 seminar entitled, “101 for Practitioners,” on our YouTube channel.

We received a question about an Examiner broadly interpreting the prior art by generalizing its teachings and then applying a species within the generalized teachings against the claim. We’ve covered this topic before, but it might be time to revisit it. There are three steps to an Applicant&#…

Session C of The Onion Papers recently was posted to YouTube. This session considered non-statutory double patenting rejections, Terminal Disclaimers, and best practices for 2023.

At the outset, let’s make clear this blog post will be more academic than practical.  Still, the explanation might (i) help practitioners understand reasons behind certain US Patent and Trademark Office (USPTO) rejections, (ii) provide a frame of reference for addressing Examiner concerns, and …