Category Archives: Utility

Examining the Examiner Interview

Author: Adriana L. Burgy
Editor:  Michelle Pacholec, Ph.D.

Compact or streamlined prosecution is in vogue in prosecution circles these days.  While examiner interviews are a tried and true “old” tool in a prosecutor’s tool box, they are reemerging as a means to facilitate compact or streamline prosecution, benefiting both clients and the USPTO. Some of the advantages that are driving their popularity include the fact that examiner interviews can reduce prosecution costs, minimize arguments of record, and decrease prosecution time.  Continue reading

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Markush Groups: Traps for the Unwary

Author: Amy Proctor
Editor: Adriana L. Burgy

While many patent examiners prefer Markush claims, which recite lists of alternatively useable species, to be formatted as “selected from the group consisting of A, B, and C,” Applicants should carefully consider claim construction before adopting this format. “A trap for the unwary claim drafter using Markush group language is the severely closed nature of a Markush group.”  3-8 Chisum on Patents § 8.06 (2017).
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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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Thales : Federal Circuit Forces Acceleration on § 101 for Physics-Based Claims

Author: Christopher C. Johns
Editor: Adriana L. Burgy

CAFC DecisionThales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017)

Decision:  In Thales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017), the Federal Circuit reversed a decision of the Court of Federal Claims, 122 Fed. Cl. 245 (2015), that found claims drawn to an inertial tracking system ineligible. In reversing, the Federal Circuit found that the claims were not directed to an abstract concept. Continue reading

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Foreign Filing License in a Jiffy

Author: Adriana L. Burgy
Editor: Amanda K. Murphy, Ph.D.

Foreign filing licenses are pretty routine: file an application and (assuming the application is not marked by a security screener) with the filing receipt or another USPTO official notice, there will be an indication that a foreign filing license is granted. For national security reasons, the U.S. government restricts the export of technical information. As provided in 37 C.F.R. § 5.11, a license is required before filing any application for patent or for the registration of a utility model in a foreign country, foreign patent office, foreign patent agency or any international agency, if the invention was made in the United States, and: (1) an application on the invention was filed in the U.S. less than six months prior to the date on which the foreign application is to be filed, or (2) there has not been an application filed in the U.S. Running afoul of the foreign filing license requirement (35 U.S.C. § 184) may result in any subsequently granted patent being held invalid (35 U.S.C. § 185), and if convicted of willfully disclosing an invention ordered to be held secret, a fine of not more than $10,000 or imprisonment for not more than two years, or both (35 U.S.C. § 186).  Continue reading

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