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Patent Applications › Claim Amendments › Patent Prosecution

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Reissuing a Reissued Patent: Additional Formatting Rules and Pitfalls

Sterne, Kessler, Goldstein & Fox P.L.L.C. on

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

Wolf, Greenfield & Sacks, P.C.

Strategic Uses and Considerations for Reissue Applications (Part 3 of 3)

Wolf, Greenfield & Sacks, P.C. on

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

Wolf, Greenfield & Sacks, P.C.

Strategic Uses and Considerations for Reissue Applications (Part 1 of 3)

Wolf, Greenfield & Sacks, P.C. on

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

Snell & Wilmer

Appealing the Rejection of a Patent Application

Snell & Wilmer on

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

Knobbe Martens

The Tangential Exception to Prosecution History Estoppel

Knobbe Martens on

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

Mintz - Intellectual Property Viewpoints

Effect of A Restriction Requirement on Prosecution History Estoppel

Mintz - Intellectual Property Viewpoints on

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

Womble Bond Dickinson

Arguing Definitions in Patent Prosecution

Womble Bond Dickinson on

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

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