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United States Patent and Trademark Office › Patent Examinations › Claim Construction

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Baker Botts L.L.P.

The Impact of Prosecution Length on Infringement Outcomes in Patent Litigation

Baker Botts L.L.P. on

This article continues our analysis of over 89,000 patents to determine how the number of office actions to allowance during prosecution impacts litigation outcomes. Last month we discussed how prosecution length impacts...more

McDonnell Boehnen Hulbert & Berghoff LLP

A Few Things that USPTO Could Do to Simplify Patent Prosecution

McDonnell Boehnen Hulbert & Berghoff LLP on

The U.S. Patent and Trademark Office handles hundreds of thousands of patent applications per year, as well as various types of administrative patent proceedings.  While the USPTO has made incremental improvements in its...more

Goodwin

Issue Twenty-Seven: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Bass, Berry & Sims PLC

USPTO Designates Three Decisions Concerning Discretion to Deny Inter Partes Review Under 35 U.S.C. § 325(d)

Bass, Berry & Sims PLC on

On March 24, the USPTO issued two precedential decisions and one informative decision that clarify the circumstances under which the PTAB will utilize its discretion to deny IPR institution under 35 U.S.C. § 325(d). This...more

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

The Goods on IP - October 2019: Curver Luxembourg v. Home Expressions: Words Can Matter in a Design Patent

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

Claim construction for a design patent is mainly focused on the drawings, which show the ornamental design that is protected by the patent. But the Federal Circuit recently identified one situation where the drawings weren’t...more

Winstead PC

Determining the Patent Eligibility of Inventions Under the New USPTO Guidelines

Winstead PC on

Under the U.S. Patent Act, one can patent “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Common exceptions to what can be patented include laws of...more

Nutter McClennen & Fish LLP

New USPTO §101 Guidelines Adopt Policies Favorable to Patent Applicants

Nutter McClennen & Fish LLP on

Decisions by the Supreme Court and the Federal Circuit over the past decade have wrestled with the question that 35 U.S.C. §101 was intended to answer: What is eligible for patent protection? The text of §101 says a patent...more

Nutter McClennen & Fish LLP

Revised Guidance is a Promising Step for Subject Matter Eligibility Examination

Nutter McClennen & Fish LLP on

On January 7, 2019, the United States Patent and Trademark Office (USPTO) released revised subject matter eligibility examination guidance (“Guidance”), foreshadowed by USPTO Director Iancu last fall. The Guidance is...more

Bradley Arant Boult Cummings LLP

Overlooked Changes To Patent Cooperation Treaty Practice - Law360

Bradley Arant Boult Cummings LLP on

The recent Actelion Pharmaceuticals Ltd. case brought to light a little-known quirk in how national stage patent applications affect the length of one’s patent term. That case involved a drug company losing five days of...more

Proskauer - New England IP Blog

USPTO Updates Patent Eligibility Guidance in View of Federal Circuit Berkheimer Opinion

Proskauer - New England IP Blog on

The U.S. Patent and Trademark Office (USPTO) recently issued a memorandum to its patent examining corps that changes the way examiners should evaluate the question of whether a claim element is “well-understood, routine,...more

Womble Bond Dickinson

Strategies to Argue Patentable Subject Matter per USPTO Eligibility Memo

Womble Bond Dickinson on

It is time to take a deeper look and derive or strengthen some strategies to argue for patentable subject matter eligibility during patent prosecution, now that the first round articles on the USPTO Memorandum April 19, 2018,...more

Jones Day

In Precedential Decision, Board Says Packard, Not Nautilus, Governs Indefiniteness During Pre-Issuance Examination

Jones Day on

...In a recent (and rare) precedential decision, the Board reaffirmed that the Supreme Court’s decision in Nautilus does not change “the USPTO’s long-standing approach to indefiniteness” in the context of pre-issuance...more

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