Over the past couple of years we have discussed the important role a broadening or narrowing reissue can play in proper portfolio development and resuscitation of a patent or patent family after invalidation in court or the...more
Reissue applications represent a very small fraction of the total number of applications filed at the USPTO each year. Indeed, at the midpoint of 2025, over 1.2 million utility applications have been filed, with less than 300...more
The U.S. Patent and Trademark Office (USPTO) is terminating the After Final Consideration Pilot Program 2.0 (AFCP 2.0), which provided examiners additional time to search and/or consider responses following final rejection of...more
Honeywell owns U.S. Patent 9,157,017, which claims automotive air-conditioning systems. The application to the ’017 patent had originally described and recited claims for flouroalkane compounds for use in refrigeration...more
Sometimes appealing an Examiner’s rejection is the only practical option. If no claims of valuable scope have been allowed or indicated as allowable, and all clarifying claim amendments, supporting evidence and salient...more
ELI LILLY AND COMPANY v. HOSPIRA, INC. Before Lourie, Moore, and Taranto. Appeal from the District Court for the Southern District of Indiana. Summary: A narrowing claim amendment does not necessarily surrender all...more
The decision whether to issue a Restriction Requirement during patent prosecution lies with the patent examiner, not the patent applicant. A Restriction Requirement can nevertheless trigger prosecution history estoppel that...more
Low-cost patent applications may cost quality. It’s no secret that many more clients than in the past are demanding that their outside patent counsel prepare patent applications at a lower cost—often far lower—than their...more
Claim terms are given a broadest reasonable interpretation (BRI) consistent with the specification, ideally. Occasionally, a USPTO examiner interprets a claim term in a manner different from what the applicant in a patent...more
Arendi S.A.R.L. v. Google LLC, Appeal No. 2016-1249 (Fed. Cir. Feb. 20, 2018) - In Arendi S.A.R.L. v. Google LLC, the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB) obviousness determination following...more