WHAT IS A PATENT?

Introduction What is a patent?  Simply stated, a patent is the exclusive right to prevent others from making, using or selling the invention or things made using the invention. Surprising?  See the following discussion. Discussion Technically, a patent does NOT give you the right to make use or sell the products of your invention since…

Read More →

OVERCOMING AN OBVIOUSNESS REJECTION

Introduction Rejections under 35 U.S.C. 103 are the most common basis for an examiner refusing to allow issuance of a patent.  Section 103 outlines an improvement or modification that would be obvious to a hypothetical person of ordinary skill in the art is not patentable. I have already written on this topic, i.e., “overcoming an…

Read More →

PATENT APPLICATION FLOW CHART

  Introduction The following is a simplified description on one possible chain of events that occur in the patenting process.  This is a hypothetical patent application flow chart.  See my article on “Behind the First to File Rules“.  Also review my article regarding “Patent Application Elements“. Pre-Filing Outline Document invention in writing, signed and dated…

Read More →

103 Obviousness Rejections II

Introduction I am following up on my recent post Section 103 Obviousness Rejections pertaining to the 2018 USPTO Guidelines issued to USPTO examiner.  Recall that in 2007, the US Supreme Court broadened the basis for an examiner to reject a claim of a patent application on the assertion that the development subject of the claim was obvious…

Read More →

Section 103 Obviousness Rejections

Introduction Continuing with my discussion yesterday regarding rejection of patent applications based upon the examiner’s assertion that the claimed development is obvious, I am exploring the USPTO updated guidance to examiners published in early 2018.  An invention can not be patented if the development would have been obvious to a person skilled in the art at…

Read More →

Non-Analogous Art Can’t be Obvious

Introduction Many of my recent posts have been concerned with whether a development is eligible for patent protection.  This is a Section 101 question.  Recall that laws of nature, natural phenomena and abstract ideas without more are not eligible for patent protection.  Other hurdles of patenting are whether the development is novel (Section 102) or whether the development…

Read More →

Clarifying What are Patent Ineligible Abstract Ideas

Introduction: Intertwined with the long ambiguity of the scope of patent eligible software has been the difficulty in defining what are patent ineligible “abstract ideas”.  Recall 35 U.S.C. Section 101 states that all things invented by man are patentable subject matter except laws of nature, natural phenomena or abstract ideas.  These three items are referred to below as…

Read More →

Review of CBM Procedure

Introduction I very recently wrote an article regarding the use of the Covered Business Method review procedure created under the AIA of 2012.  The Covered Business Method review procedure is a powerful tool that can be used to challenge an issued patent that pertains to a business method.  See Junk Patents and Covered Business Methods.  The…

Read More →

PATENTS FOR BUSINESS METHODS (REVISED)

Introduction Methods of conducting business can be patentable.  However, the USPTO inquiry expands beyond the questions of whether the method is new (Section 102) or whether the method is an obvious variation of prior art methods (Section 103).  Further, the pendency for examination of business method applications is the longest within the USPTO.  Also see…

Read More →

Current Inter Partes Review

Introduction First, the AIA revised the prior Inter Partes Review practice discussed in an earlier blog. This blog pertains only to the new practice (post AIA).  You may also want to review my blog “Challenges to your Patent” Discussion Inter Partes Review can only be initiated after 9 months for the patent grant.  This is consistent with the 9 month…

Read More →