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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CEASE AND DESIST LETTERS

Clients know that a cease and desist letter is the typical first salvo taken against an infringer. What is not typically understood is that such letters must be carefully prepared to prevent the infringing party from using the letter as the grounds for suing (in a declaratory judgment action) the patent or trademark owner. The…

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