Patent Prosecution

Software Patentability v.2.0.1.6: A Review of 2016 Federal Circuit Opinions

January 19, 2017

The January patent prosecution practice luncheon included a discussion of highlights from 2016 Federal Circuit opinions that addressed the patentability of software inventions. Although the Federal Circuit continued its trend of invalidating most of the software patents it reviewed, several cases offered software patent holders new cause for optimism. The presentation can be downloaded here.


Patent Prosecution Lunch of July 2015

July 28, 2015

Topics covered in this patent prosecution lunch presentation include information about newly appointed Federal Circuit Judge Kara Stoll and the Cooperative Patent Classification (CPC) system. In addition, the presentation describes recent problems of accessing Private PAIR/EFS Web using the Google Chrome browser as well as how to change an entity size in Private PAIR. It also discusses the new Expedited Patent Appeal Pilot program as well as the Collaborative Search Pilot Programs (CSP) between the US Patent and Trademark Office (USPTO), the Japan Patent Office (JPO), and Korean Intellectual Property Office (KIPO). Some recent decisions concerning divisional applications and their impact on the obviousness type double patenting rejections along with patent term adjustment are further analyzed. The presentation can be downloaded here.


January 2015 Patent Prosecution Lunch Presentation

February 16, 2015

The January patent prosecution practice luncheon included a discussion of several patent attorney ethics cases about subject matter conflicts, failures to supervise subordinates, signature requirements, and failure to properly claim priority. The presentation can be downloaded here.


November 2014 Patent Prosecution Lunch Presentation

December 3, 2014

The November patent prosecution practice luncheon included a discussion of Patent Advisor and several cases which have were successful in overcoming rejections based on Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 134 S. Ct. 2347 (2014). The presentation can be downloaded here.


August 2014 Patent Prosecution Lunch Presentation

August 29, 2014

This month’s patent prosecution luncheon included discussion of the recent news concerning teleworking at the patent office, a patent application drafting lesson, the impact of Scotland’s independence vote on intellectual property rights, and the impact of the Alice decision patent office operations. The presentation can be downloaded here.


Prosecution Luncheon November 2012

December 3, 2012

This month our Patent Prosecution Group Luncheon discussed the increasing problem of Non-USPTO solicitations, the new versioning scheme for the TMEP, prior illegal use in the context of registering a trademark, assignment of trademark rights, a new case on objective indicia of nonobviousness, and when a “lease” is a “sale” under section 271(a) of the patent statute. To download a copy of the presentation click here.


July 2011 Patent Group Lunch

August 4, 2011

Topics covered in this month’s patent prosecution presentation included:

- Discussion of inequitable conduct cases post-Therasense

- A recent claim construction case in which the Federal Circuit was somewhat in conflict over the best manner for claim construction

- The business method patent review section of the HR 1249-America Invents Act

- Recent Supreme Court cases Kappos v. Hyatt and Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S.

Click here to download a copy of the presentation.


April 2011 Patent Prosecution Lunch

May 2, 2011

Topics covered in this month’s patent prosecution presentation include recent case law from the U.S. Court of Appeals for the Federal Circuit (CAFC) dealing with reissue applications and dependent claims.  A brief overview of the arguments being presented in the Microsoft v. i4i case is also reviewed.  Oral arguments in this case were recently heard by the United States Supreme Court.  Case law developments dealing with written description for mechanical cases is also addressed.  Finally, an overview on the breakdown of patent applications filed in Europe in 2010 is presented.  Click here  to download a copy of the presentation.


January 2011 Patent Prosecution Lunch

February 1, 2011

Topics covered in this month’s patent prosecution presentation include a discussion of the new extended missing parts program, the Microsoft v. i4i case in which the clear and convincing standard for the presumption of validity is being challenged, the Costco v. Omega case regarding foreign first sale doctrine, patent office appeals practice, and joint infringement. Click here to download a copy of the presentation.