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
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
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
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
During Nodal, Session 13, we did not discuss the substance of the Office Action. We since have received a question about the Office Action. Further,… Read More »Nodal, Session 13, Follow-Up
We recently received a question about the documents necessary for entering an application into the Patent Prosecution Highway (PPH) program at the USPTO. As a… Read More »Requisite PPH Documents
Petitions efficiently address procedural issues at the US Patent and Trademark Office (USPTO). In this regard, petitions differ from appeals, which are the proper (if… Read More »Exemplary Petition Practice
In a previous post, we discussed the USPTO’s Track One prioritized examination program. Let’s take a closer look. The Track One program allows Applicants desiring… Read More »On Track with Track One
We were recently asked about expedited examination at the USPTO. The options for doing so are basically: pay now, work now, or do both later.… Read More »Expediting Examination at the USPTO
We receive many questions about the Patent Prosecution Highway (PPH) program. So, let’s revisit the topic. Few, if any, Applicants file applications in the USPTO… Read More »A Little More PPH