Treat others as they should be treated. This includes patent examiners – many of who do a fantastic job. Be respectful to an examiner, but don’t let an examiner disrespect your client. Patent prosecution strategy is complex. At least, it should be complex. If you are hanging on to hard and fast rules regarding appeals, … More “Patent Examiner, You Aren’t Doing Your Job” – Can You Say That? (an analytics perspective)
Improper hindsight bias is a problem that is ever present in patent law. Trying to determine whether an invention would have been obvious is an inherently backward-looking analysis. As a result, reasonable minds can disagree, so knowing the law and how to frame obviousness allows you to be a better advocate for your client. As … More Are You Improperly Arguing Improper Hindsight Bias?
One of the most frustrating fact patterns an applicant or patent attorney can face is when you are up against an examiner who thinks everything is obvious. This feature – obvious. That feature – obvious. Everything in the application – obvious. Even when the Examiner does not have sufficient evidence to back up these assertions. … More Don’t Let the USPTO Get Away with Speculating that a Feature of an Invention is Obvious
I find ex parte appeal analytics at the USPTO, specifically from LexisNexis PatentAdvisor, to be the most straightforward and informative patent prosecution analytics when it comes to searching language in patent prosecution documents and the resulting impact. Reviewing patent analytics for language used in Office Actions and Responses to Office Actions can be interesting, but … More Does QAS involvement impact PTAB ex parte appeal win rate?
I frequently like to hedge my bets while prosecuting patent applications before the USPTO. If an examiner is arguably wrong in rejecting claims based on the prior art, I will often suggest to my clients to argue the rejection without amending the claims, but also to add new dependent claims that distinguish over the cited … More The value of adding new dependent claims during patent prosecution
Please check out my article on IPWatchdog regarding whether arguing that the Examiner has not established a prima facie case of obviousness is an effective strategy according to patent analytics from LexisNexis PatentAdvisor. https://www.ipwatchdog.com/2022/10/05/using-analytics-assess-effectiveness-common-patent-prosecution-practices/id=151863/
A common argument used by patent attorneys and agents during patent prosecution at the USPTO is that a reference teaches away from the claimed invention. This argument is used to traverse an obviousness rejection (side note – teaching away does not apply to anticipation rejections), which is the most common rejection from the USPTO. For … More Do not fall into the teaching away trap
Over the past couple of years I have really taken an interest in patent analytics, mainly using PatentAdvisor from LexisNexis. I figured out that if you search by different codes using the file wrapper search that you get guidance about how effective arguments are on Ex Parte Appeal within the USPTO at the PTAB. I … More PTAB patent analytics say not to argue a reference is non-analogous
No! The answer is definitely no!! Everyone has a relatively narrow career path, and everyone hears a limited amount of voices. I have worked at the same firm my entire career, and because of this, I have frequently read US patent law blogs to expand my perspective. Over the years, there have been a plurality … More Aren’t there enough patent nerds blogging?