Prosecution Pointer 73

Prosecution First Blog Pointer

WIPO provides resources and guidance for avoiding refusals of industrial design applications (known as design patents in the U.S.) under the Hague System here.

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Anticipation Law Does Not Permit Finding Missing Claim Elements Based Only on Artisans “Immediately Envisioning Them”

Anticipation Law Does Not Permit Finding Missing Claim Elements Based Only on Artisans “Immediately Envisioning Them”

Author: J. Derek McCorquindale
Editor: Eric P. Raciti

The recent Federal Circuit decision, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. et al., No. 2016-1900 (Fed. Cir. Mar. 14, 2017), explained the anticipation teachings of earlier precedent and unanimously reversed the invalidity determination of the Patent Trial and Appeal Board (“PTAB”). In the March 14, 2017, panel opinion by Circuit Judge Moore, alongside Circuit Judges Lourie and Taranto, the court rejected the PTAB’s anticipation analysis and corrected a misapplication of 35 U.S.C. § 102 used to invalidate a claim. Continue reading

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Prosecution Pointer 72

Prosecution First Blog Pointer

Learn how to setup the favorites widget, i.e., small applications that display snippets of important information and provide shortcuts to larger USPTO applications and affiliated sites, on the new MyUSPTO website here.

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Prosecution Pointer 71

Prosecution First Blog Pointer

The USPTO has resources for kids, teens, parents & teachers to help the public learn about IP, including the Inventor Collectible Card Series, which began in 2012.

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Myriad, Mayo, Chakrabarty, Oh My: Strategies for Life Sciences Diagnostics – Part III

Author: Adriana L. Burgy
Editor: Leslie A. McDonell

In Part III of “Myriad, Mayo, Chakrabarty, Oh My:  Strategies for Life Sciences Diagnostics” (links to Part I can be found here and Part II here), we consider the use of examiner interviews and how they can assist into obtaining allowable diagnostic claims. An examiner interview is not a new tool for the prosecutor; it gives an applicant an opportunity to discuss the prior art, the invention, and potential claim amendments in one instance with an examiner. While the gold standard is an in-person interview, telephone interviews are the norm due to today’s prosecution budgets and the USPTO hoteling options for examiners. Continue reading

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