The Onion Papers, Session C
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.
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JPO/USPTO Software-Related Inventions
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… Read More »JPO/USPTO Software-Related Inventions
Japanese-Style Arguments at the USPTO
Japanese-style obviousness arguments typically are ineffective at the USPTO. Why? Initially, during prosecution, “the patent examiner must first set forth a prima facie case .… Read More »Japanese-Style Arguments at the USPTO
Obviousness Rejections with Several References
We received a question about responding to obviousness rejections with several (e.g., 3 or more) references. Such a rejection complicates drafting a response. The natural… Read More »Obviousness Rejections with Several References
The Name Game
We received a request to discuss the titles and names used by Examiners, attorneys, and guests during interviews at the USPTO. It’s an area in… Read More »The Name Game
Budgeting Maintenance Fees
We frequently are asked by in-house counsel about budgeting for development and maintenance of their US patent portfolio. At least among US Applicants, these portfolio… Read More »Budgeting Maintenance Fees
Preamble On
It is well-established, “No litmus test defines when a preamble limits claim scope.” Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir.… Read More »Preamble On
The Inherency Two-Step
Non-US practitioners often ask us questions about inherency. So, let’s discuss why American patent practitioners and USPTO Examiners might frequently refer to inherency. Inherency occurs… Read More »The Inherency Two-Step
Examiner Experience Levels
We frequently receive questions regarding the experience levels of Examiners. How can an Applicant know the seniority of the Examiner examining their case? First, it… Read More »Examiner Experience Levels
DSMER Thoughts
The USPTO recently began its Deferred Subject Matter Eligibility Response (DSMER) program. The program is scheduled to conclude July 30, 2022. The program might have… Read More »DSMER Thoughts