This post is a slight departure from previous posts on this blog in that it focuses on communications between prosecutors and clients rather than communications between prosecutors and the U.S. Patent and Trademark Office. The duty of candor that every applicant and patent practitioner owes to the U.S. Patent and Trademark Office (USPTO) has been…
Enhancements To Patentablydefined.com
Email Subscriptions I know that RSS feed readers/aggregators aren’t for everyone. So, I am pleased to announce the addition of the option to subscribe to this blog via email. Just enter your address and follow the directions. Then sit back and my latest posts will be delivered to your inbox. Comments In response to several…
How To Use The U.S. Patent Office’s Policy Of “Compact” Prosecution To Your Advantage
The Policy of “Compact” Prosecution Patent prosecution before the U.S. Patent Office is conducted under a policy of “compact” prosecution. Under this policy, prosecution of an application is generally designed to conclude with the Examiner’s consideration of one response to one non-final Office Action. That is, a second Office Action, responding to an applicant’s reply…
Prosecution Profanity – Words To Avoid In Prosecution – Part 2
This is the second of a two-part series on words/phrases that should be used with extreme caution in patent prosecution before the United States Patent Office. Limitation It is my belief that a prosecution history that avoids use of the term “limitation” when referring to a claim feature is of greater value in litigation than…
Practical Prosecution Advice After KSR
KSR In A Nutshell The Supreme Court’s decision in KSR International. Co. v. Teleflex, Inc., et al., 550 U.S.___(2007) modified an established test for obviousness under 35 U.S.C. § 103. Prior to KSR, Federal Circuit jurisprudence generally required a teaching, suggestion, or motivation to support a combination or modification of cited art (the TSM test)…