Avoiding Patent Death – Draft Smart Claims

Introduction: I continue to closely monitor the case law regarding patenting computer software.  The August 26, 2021 decision of Universal Secure Registry v Apple is an example.  In this decision, the Court of Appeals for the Federal Circuit (usual final arbiter of patent disputes) invalided 4 patents as merely claiming abstract ideas.  Abstract ideas are…

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Patenting Computer Software

INTRODUCTION When is software patentable?  Can you obtain a computer software patent?  It is generally understood that it is difficult to obtain patent protection for computer software.  This is a subtopic of the question of when it is possible to patent a method of doing business. There are some guidelines.  This includes guidance for determining…

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Trademark-Design Patent Overlap

INTRODUCTION:  This article explores the trademark-design patent overlap.  The maker of a new product or service wants to distinguish its goods/services from the competition.  A distinctive style of a product, identifying the maker or source of the product, can be valuable intellectual property.  Note I have previously written on the distinctions between trademarks and patents. …

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Sample Patent Flow Chart

Introduction: Attached below is a sample patent flow chart.  I start with the inventor’s conception of the idea.  Included are the steps to be taken to reach the point of possible patent filing.  (Note my sample assumes that a provisional application is filed first.  However it is possible to go directly to the Non-provisional application…

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“Groundbreaking” But Not Patentable?

INTRODUCTION: It is clear abstract ideas are not patentable. However the topic is much more complex. I have written a number of articles regarding the fog shrouded abyss related to patenting computer business methods and medical diagnostic procedures.  The Supreme Court and the Court of Appeals for the Federal Circuit (commonly known as the “Federal Circuit”) continue to…

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Design Patent Infringement – Dissenting Opinion

INTRODUCTION: I recently discussed the usefulness of pursuing design patents.  The Federal Circuit just ruled on a case of design patent infringement.  Lanard Toys Ltd., v. Dolgen Corp LLC, 19-1781 (Fed. Cir. 2020).  An image copy of the object subject of the design patent is compared below to the claimed infringing product.  Note that the Federal Circuit decision makes…

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Patentability Swamp

Introduction I have recently posted a blog of mechanical device patents becoming ensnared in the patentability swamp.  The swamp is the ineligibility of patenting “natural laws”, “natural phenomena” and “abstract ideas”.  This has followed the adverse rulings for patenting medical procedures and business methods. There has been another shift in the ground underlying this swamp.  Further guidance was issued from the USPTO…

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Patenting Medical Devices and Procedures

Introduction There is a great deal of valuable intellectual property associated with medical technology.  However the patent landscape is, in my opinion, unclear and unsettled.  Diagnostic procedures that utilize human biologic functions are denied patent protect because the procedures rely on “natural law”. I have tried to outline the problem using the actual wording of disputed patents…

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APPEALING THE EXAMINER REJECTION

Introduction I recently published a blog regarding the frustrating but common rejection of a patent application based upon the examiner asserting that the invention is obvious.  See  Overcoming an Obviousness Rejection.  Depending upon the individual circumstances, it may be worthwhile for appealing the examiner rejection.   Recall obviousness under 35 U.S.C. section 103 can be a subjective exercise or…

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