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Spotting the difference between the priority document and the claims (T 1303/18)

The IPKat

Much of patent prosecution and opposition at the EPO is an advanced game of spot the difference. Subtle differences between the application as filed and the claimed subject matter can be fatal to a granted European patent. The opponent argued that claim 1 as granted was not entitled to this priority date.

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The Times They Are a-Changin’? A Look at the Revised Patent Prosecution Timelines in the Draft Patent Amendment Rules

SpicyIP

A Look at the Revised Patent Prosecution Timelines in the Draft Patent Amendment Rules Md. Sabeeh Ahmad The Department for Promotion of Industry and Internal Trade, Ministry of Commerce has released the Draft Patents (Amendment) Rules, 2023 (“Draft Rules”) suggesting some key changes in the Patent Rules, 2003 (“2003 Rules”).

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Glaring Procedural Questions Arising Out of a Recent Patent Prosecution Proceeding  

SpicyIP

Discussing the background of the case in this guest post, Suriya Balakanthan, highlights how these procedural lapses took place and highlights the impact that this case can have on the patent prosecution setup. Suriya is a Patent Analyst from Salem Tamil Nadu. The views expressed at those of the author’s alone.

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Federal Circuit Vacates District Court’s Claim Construction of the Term “Pipette Guiding Mechanism”

Intellectual Property Law Blog

During the supplemental examination, Malvern cited seven office action documents from the ’782 patent prosecution in an IDS and introduced two declarations by the co-inventor Rochalski. Specifically, the Federal Circuit considered the plain and ordinary meaning of the term to a skilled artisan at the time of the invention.

Invention 130
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"Using AI tools to help assess inventive step": A response to the CIPA journal article

The IPKat

The cover article of the May 2024 edition of the CIPA Journal proposed a new test for inventive step using AI. The CIPA journal article proposes to use an AI derived measurement of semantic similarity between the claims and the prior art as a new test for inventive step.

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Essential Elements Test for Reissues Patents

Patently-O

The problem: the reissue claims omit an “essential element” of the original invention in violation of 35 U.S.C. In its decision, the Federal Circuit rejected their reissue patent claims on what is clearly a technicality and one that is extremely biased toward those who spend more on patent prosecution.

Patent 98
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Developing an IP Strategy for a Single Technology: A Comprehensive Guide for Corporations

IP.com

Invention Novelty Assessment: conduct a quantitative assessment of the novelty of an innovation against a corpus of global prior art to evaluate the feasibility of pursuing a patent. This helps in determining the novelty and non-obviousness of the invention. This will help in identifying the core aspects that need protection.