APPLICATION APPROVAL RATES

There are many changes taking place within the US Patent and Trademark Office or impacting the performance of the Patent Office and thereby confirming patent reform is still alive in Congress. The legion of new examiners has been empowered to reject claims on the basis that the invention is obvious or would be common sense…

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INNOVATION AND RECESSION

While we debate/worry whether we are sliding into a recession, it may also be an opportune time to think of our possible alternative opportunities to make income or build assets. The Internet has given us a powerful tool. With time, you can become an expert in the market for a particular product or process. Simply…

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OVERCOMING AN OBVIOUSNESS REJECTION

I have already written on this topic. For example, see Obviousness Rejections Post KSR The USPTO has recently issued Examination Guidelines for Determining Obviousness for use by its examiners. Analysis for obviousness involves (i) determining the scope and content of the prior art, (ii) ascertaining the differences between the claimed invention and the prior art;…

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NEW CONTINUATION RULES ANNOUNCED

The new rules were scheduled to take effect November 1, 2007. However there has been litigation challenging the authority of the US Patent Office to implement these substantive rules. A judge has agreed and a temporary injunction has been granted. In summary, the rules permit 2 continuation applications (including CIP) and one Request for Continuation…

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OBVIOUSNESS REJECTIONS POST KSR

I am concerned that there will be a significant increase in the number of examiner rejections based upon the asserted obviousness of the invention. The KSR decision has weakened the ability of the applicant to rebut those claims during prosecution. It is no longer possible to point to the absence of a suggestion, motivation or…

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PEER TO PATENT PILOT PROGRAM

The USPTO is trying something new and different. Until now, third parties only had a very limited opportunity to submit prior art to the examiner during the first 2 months after publication of the application. See Current ‘Opposition’ Practice A new program operated by the New York School of Law will be allowed to collect…

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THE FALLOUT OF KSR v. TELEFLEX

As a quick note, as the initial dust from the Supreme Court’s decision settles, the question remains what does the decision mean to the small inventor? In my view, the USPTO examiners will feel more emboldened to reject claims, stating the change was within the common knowledge of a person skilled in the art or…

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