Invention, Patent and Patent Prosecution - Intellectual Property Pulse

The Shift Towards Primary Examiners: Implications for Patent Prosecution

Patently-O

JULY 22, 2024

by Dennis Crouch In recent years, the United States Patent and Trademark Office (USPTO) has undergone a significant shift in its examiner composition, with real implications for patent prosecution strategies. Prior to 2015, over 35% of patents were examined by assistant examiners. 411 (2021). Here’s why: 1.

Patent Prosecution

Patent Prosecution Patent Art Patent Application

AI, Invention Harvesting and the Patent Backlog | IPWatchdog Unleashed

IP Watchdog

MARCH 24, 2025

This week on IPWatchdog Unleashed I speak with my friend Jason Harrier, former Chief Patent Counsel at Capital One and current co-founder and General Counsel of artificial intelligence (AI) company IP Copilot.

Invention

Invention Patent IP Patent Prosecution

Patent Protection for Entertainment Software Inventions

JD Supra Law

NOVEMBER 29, 2022

Innovators seeking patent protection for entertainment software inventions should be aware that all software inventions face patent-eligibility issues. Nevertheless, patent practitioners who are experienced in the art of software patent prosecution can help ensure that software inventions get maximum protection.

Invention

Invention Patent Prosecution Patent Art

Enjoining Patent Prosecution

Patently-O

JULY 22, 2022

In particular, the agreement required disclosure and assignment of “any ideas, conceptions, inventions, or plans relating to sleep, mattresses, bedding, sleep monitoring, health or wellness as it relates to sleep (including biometric monitoring relating to sleep), or bedroom or sleep technologies.”

Patent Prosecution

Patent Prosecution Patent Invention Patent Application

USPTO Patent Fee Increases Demand a New Approach to Maximizing Your Patent ROI

IP.com

APRIL 9, 2025

On January 19, 2025, the United States Patent and Trademark Office (USPTO) enacted significant fee increases for both patents and trademarks. Patent Prosecution Efficiency Rising fees for excess claims, RCEs, and IDS filings necessitate a leaner, more efficient approach to patent prosecution.

Patent

Patent Intellectual Property Patent Prosecution IP

The USPTO Claims it Wants to Ensure ‘Robust and Reliable’ Patents – But Its Questions Imply Another Assault on Patent Owners

IP Watchdog

FEBRUARY 1, 2023

Last October, the United States Patent and Trademark Office (USPTO) issued a Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights. Patent owners, especially small businesses and independent inventors, need two things of the patent system: 1) Reliability/believability.

Patent Prosecution

Patent Prosecution Patent Inventor Invention

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

SpicyIP

AUGUST 29, 2023

Image from here On August 23, the Draft Patent (Amendment) Rules, 2023 , were published in the Gazette of India, inviting public comments by September 22. Since then, the Rules have been extensively discussed within the IP community, especially the potential impact they may have on the patent opposition mechanism.

Patent Prosecution

Patent Prosecution Patent Patent Application Reporting

What You Should Know About Patent Prosecution: The Strategy Behind Building a Patent Estate The Strategy Behind Building a Patent Estate

JD Supra Law

JUNE 23, 2022

Building a successful life sciences patent estate can seem like a daunting task, but a foundation of strategic decisions early on can be a big help long term. By: Orrick, Herrington & Sutcliffe LLP

Patent Prosecution

Patent Prosecution Patent Invention

Takeaways From the U.S. Patent and Trademark Office’s Artificial Intelligence and Emerging Technologies Partnership Series – Part One of Three

Intellectual Property Law Blog

SEPTEMBER 29, 2022

Patent and Trademark Office (USPTO) conducted a live meeting for its Artificial Intelligence (AI) and Emerging Technologies (ET) Partnership Series. In one key takeaway, the panel suggested drafting an application with specific details about the innovation in order to support patent eligibility and enablement for the innovative concept.

Technology

Technology Trademark Patent Prosecution Patent

USPTO’s Final Rule on FY 2025 Patent Fees Drops Divisive Proposals for Across-the-Board Hikes

IP Watchdog

NOVEMBER 20, 2024

Patent and Trademark Office (USPTO) today published a final rule announcing across-the-board fee increases of 7.5% but scrapping the most controversial proposals from its April 2024 Notice of Proposed Rulemaking (NPRM). The changes will take effect as of January 19, 2025.

Patent

Patent Publishing Trademark Patent Prosecution

Patent Continuation Strategies Face Major Threat

Patently-O

OCTOBER 16, 2023

by Dennis Crouch Impact of Sonos on Patent Prosecution : The recent Sonos v. Google decision threatens to grind to a halt, or at least significantly restrict, a once-common patent prosecution strategy – keeping continuation applications pending for years to obtain new claims that cover marketplace developments.

Patent

Patent Patent Prosecution Invention Inventor

Glaring Procedural Questions Arising Out of a Recent Patent Prosecution Proceeding

SpicyIP

JANUARY 17, 2024

Ideally, it is the responsibility of the Patent Office to check that every applicant wishing to obtain a patent registration is complying with the mandated rules and procedural formalities, and in case there are any lapses, the office must take appropriate measures. Suriya is a Patent Analyst from Salem Tamil Nadu.

Patent Prosecution

Patent Prosecution Patent Invention Copying

Central Tendency in US Patent Claim Counts

Patently-O

MARCH 1, 2022

The first and second are histograms showing the number of claims per US utility patent – 2021 and 2006 issue dates respectively. The 2006 patents are significantly more spread, with many more patents under and over 20-claims mark. But – why does someone need 20+ restatements of the invention?

Patent

Patent Patent Prosecution Invention

Insilico Medicine: Lessons in IP strategy from a front-runner in AI-drug discovery

The IPKat

FEBRUARY 4, 2025

Kat-assisted AI drug discovery Patents versus marketing in AI drug discovery A crucial consideration in AI-assisted drug discovery is the relationship between patent protection and disclosure. The key legal test is whether a skilled person could perform the invention. chemical identity) of its clinical candidates.

IP

IP Invention Inventor Designs

OpenAI's granted large language model (LLM) patents

The IPKat

AUGUST 13, 2024

OpenAI has the reputation for protecting its innovations through the use of trade secrets as opposed to patents. This is perhaps not surprising, given that patent applications are not published until 18 months after they are filed, and that OpenAI's major innovation of ChatGPT was first released about 2 years ago. Who are OpenAI?

Patent

Patent Editing Inventor Patent Application

Cooperative v. Kollective CAFC Decision Demonstrates Virtues of Consistent and Candid Patent Prosecution and Litigation

IP Watchdog

OCTOBER 19, 2022

We have found, however, that it is often the slow-and-steady truth that wins the race in our deliberative justice system, which for patents has both administrative and judicial components. which reversed a Rule 12(b)(6) dismissal on patent ineligibility under 35 U.S.C. § Kollective Technology, Inc.,

Patent Prosecution

Patent Prosecution Litigation Patent Invention

Applicant Loses Appeal from USPTO Rejection of Cancer Patent Claims

IP Watchdog

JANUARY 10, 2025

Court of Appeals for the Federal Circuit (CAFC) today affirmed a Patent Trial and Appeal Board (PTAB) decision that upheld an examiners rejection of certain claims of a patent application for a cancer immunotherapy invention. The opinion was authored by Judge Lourie.

Patent

Patent Patent Application Invention Patent Prosecution

Conception for Joint Inventors

Patently-O

JULY 28, 2021

Most patents involve two or more joint inventors who all claim to have contributed significantly to the invention. Conception of the invention is typically seen as the critical legal determinant of invention and some courts have written that each joint inventor must have contributed substantially to the conception of the invention.*

Inventor

Inventor Invention Patent Prosecution Art

Principals Moritz Ammelburg and Peter Fasse Author Managing IP Article “Coordinating Patent Prosecution in the U.S. and Europe”

Fish & Richardson Trademark & Copyright Thoughts

JUNE 14, 2022

Moritz Ammelburg and Peter Fasse examine the patentability requirements and prosecution schemes in the US and Europe and how applicants can prepare applications that will best serve their needs in both jurisdictions. However, different countries have different patentability requirements and prosecution schemes, and these differences.

Patent Prosecution

Patent Prosecution Invention Inventor Patent

UMKC School of Law Wins National Patent Application Drafting Competition

Patently-O

APRIL 23, 2024

Patent and Trademark Office announced the winner of this year’s National Patent Application Drafting Competition (NPADC), the University of Missouri-Kansas City School of Law. I would encourage any law student interested in pursuing a career in patent prosecution to consider participating in the competition next year.

Patent Application

Patent Application Law Patent Prosecution Patent

Germany: patent prosecution

IAM Magazine

DECEMBER 2, 2022

Patents are granted for technical inventions. Technically, inventions are usually in the field of engineering, chemistry, pharmaceuticals and physics. In contrast to other jurisdictions (eg, the United States), non-technical inventions (eg, business methods) cannot be patented in Germany.

Patent Prosecution

Patent Prosecution Patent Invention Business

Germany: patent prosecution

IAM Magazine

DECEMBER 2, 2022

Patents are granted for technical inventions. Technically, inventions are usually in the field of engineering, chemistry, pharmaceuticals and physics. In contrast to other jurisdictions (eg, the United States), non-technical inventions (eg, business methods) cannot be patented in Germany.

Patent Prosecution

Patent Prosecution Patent Invention Business

Track One Patent Applications: Accelerating Your Path to Patent Protection

Larson & Larson

NOVEMBER 12, 2024

Track One Patent Applications: Accelerating Your Path to Patent Protection After nearly 15 years of shepherding inventors through the patent process, I’ve seen firsthand how crucial timing can be in protecting intellectual property. Here’s what you need to know about this accelerated pathway to patent protection.

Patent Application

Patent Application Patent Marketing Marketing

DABUS Gets Its First Patent in South Africa Under Formalities Examination

IP Watchdog

JULY 29, 2021

South Africa’s patent office has granted the first patent for an invention conceived by an artificial intelligence (AI) inventor, DABUS. The patent is for “a food container based on fractal geometry,” and was accepted by South Africa’s Companies and Intellectual Property Commission on June 24.

Intellectual Property

Intellectual Property Inventor Journalism Patent

USPTO Requests Input on Patent Eligibility from Critical Sectors Impacted by Current Law

The IP Law Blog

JULY 15, 2021

CLS Bank Int’l , which involve the limits on patent eligibility under 35 U.S.C. § For example, in Alice, the court stated “[t]he ‘abstract ideas’ category embodies the longstanding rule that an idea of itself is not patentable.” Patent attorneys and inventors are often left to guess whether a particular invention is patent-eligible.

Law

Law Patent Invention Intellectual Property

China: patent prosecution

IAM Magazine

DECEMBER 2, 2022

Three types of patents are granted in China: invention patents, utility model patents and design patents.

Patent Prosecution

Patent Prosecution Patent Design Patent Invention

China: patent prosecution

IAM Magazine

DECEMBER 2, 2022

Three types of patents are granted in China: invention patents, utility model patents and design patents.

Patent Prosecution

Patent Prosecution Patent Design Patent Invention

Essential Elements Test for Reissues Patents

Patently-O

JULY 16, 2023

The problem: the reissue claims omit an “essential element” of the original invention in violation of 35 U.S.C. In patent lingo, we call this a “floating apparatus with grill supports” to allow grilling while floating in water. Float’N’Grill’s US 9,771,132 covers a floating grill.

Patent

Patent Invention Patent Prosecution Patent Application

Data Show USPTO Patent Pro Bono Program is Working for Women and Minorities

IP Watchdog

MARCH 24, 2022

Patent and Trademark Office’s (USPTO’s) Patent Pro Bono Program (PPBP) were African American or Black and 41% were female, according to the latest USPTO Director’s Blog. patents are women, while a Harvard study said that white individuals are three times more likely to invent than Black individuals.

Inventor

Inventor Patent Invention Blogging

The Language of Patents (Part I): Equipping Patent Applications for Pre-and Post-Grant Success

IP Watchdog

SEPTEMBER 28, 2022

Patents that are expected to protect a company’s most valuable innovations must stake a claim to that innovation and be equipped to defend it. This is because being worthy of patent protection doesn’t guarantee that an application’s claims to an innovation will not be rejected and rights to that innovation jeopardized.

Patent Application

Patent Application Patent Patent Drafting Invention

Developing and Patenting AI Inventions: 5 Things for Biotech Companies to Consider

JD Supra Law

OCTOBER 11, 2024

Patent and Trademark Office (PTO) guidance can help inform your scientific development process, from experimental design to patent prosecution to legal disputes that may arise. Recent U.S. By: Orrick, Herrington & Sutcliffe LLP

Patent Prosecution

Patent Prosecution Invention Patent Designs

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

IP.com

NOVEMBER 7, 2024

This guide provides a step-by-step approach to developing an IP strategy for a single technology that a corporation aims to patent. 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.

Technology

Technology IP Cease and Desist Patent Application

It’s a Product Patent… It’s a Process Patent… It’s Product-by-Process Patent!

SpicyIP

JULY 31, 2023

Image from here In a significant development, the Delhi High Court on July 24, 2023 passed a detailed order on ‘product-by-process’ patent claims in Vifor International Ltd. Controller of Patents , analysed by Amit here and here and the IPAB order in the State University of New York v. MSN Laboratories Pvt. Ltd and an r.

Patent

Patent Invention Patent Prosecution Inventor

Takeaways From the U.S. Patent and Trademark Office’s Artificial Intelligence and Emerging Technologies Partnership Series – Part One of Three

Intellectual Property Law Blog

SEPTEMBER 30, 2022

Patent and Trademark Office (USPTO) conducted a live meeting for its Artificial Intelligence (AI) and Emerging Technologies (ET) Partnership Series. Part One – Helpful Tips for Prosecuting Patents in the Biotechnology Space. On September 22, 2022, the U.S.

Technology

Technology Trademark Patent Prosecution Patent

How to Win a Patent Application Argument

Patent Trademark Blog

FEBRUARY 15, 2023

Will arguments be necessary in your utility patent application? Nine out of ten utility patent applications will get rejected at least once. So, yes, arguments will be required in the vast majority of utility patent applications. Many will get rejected multiple times. Examiners are human. at least for now.

Patent Application

Patent Application Patent Art Invention

Whither goest the patent troll?

The IPKat

DECEMBER 7, 2021

A decade ago, patent trolls were all the rage in the patent world. If there was a rock-star matter in the patent world, it was the debate over trolls. It got this Kat to wonder: has patent trolling become such an ""oh so yesterday" subject? Patent Trolls, ?nd Patent trolling 2021—yes, no, or maybe?

Patent Troll

Patent Troll Patent Litigation Inventor

Patent Eligibility Jurisprudence

Patently-O

OCTOBER 5, 2021

The USPTO is seeking comments on “the state of patent eligibility jurisprudence” and how eligibility law impacts both innovation and investment-in-innovation. and (2) Is patent eligibility a question of law for the court or a question of fact for the jury? The deadline for submissions is October 15, 2021. Berkheimer, No.

Patent

Patent Intellectual Property Invention Inventor

Fed. Circ. In December: A Patent Prosecution History Lesson

IP Law 360

JANUARY 2, 2025

Despite relying on two rock-solid principles of patent law, DDR lost its Federal Circuit case against Priceline.com, highlighting how a change in the scope of the invention from the provisional to the nonprovisional application can affect the court's analysis of how a skilled artisan would understand claim terms after reading the prosecution history, (..)

Patent Prosecution

Patent Prosecution Patent Invention Patent Law

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

Intellectual Property Law Blog

DECEMBER 14, 2023

Specifically, the Federal Circuit found the plain and ordinary meaning of “pipette guiding mechanism” sufficient and addressed how various claim construction doctrines affected its analysis, including the use of a non-related patent cited in an IDS as intrinsic evidence. 8,827,549 (the “’549 patent”) and its parent, U.S.

Invention

Invention Patent Prosecution Inventor Ownership

Humanizing Technology: Back to Basics on DABUS and AI as Inventors

IP Watchdog

AUGUST 7, 2021

With South Africa’s patent office having recently granted the first patent to an AI inventor, and an Australian court ruling in favor of AI inventorship, it’s time to review how we got here—and where we’re going. Further, the USPTO has issued thousands of inventions that utilize AI.

Inventor

Inventor Technology Patent Application Invention

CALL FOR TRYOUTS – USPTO National Patent Application Drafting Competition

IPilogue

SEPTEMBER 15, 2022

2021-2022 was a big year for the Osgoode’s mooting team entry for the USPTO National Patent Application Drafting Competition. We invite you to participate in the tryouts for the 2022-2023 National Patent Application Drafting Competition ! About the National Patent Application Drafting Competition.

Patent Application

Patent Application Patent Patent Drafting Invention

[Sponsored] Registration Deadline Extended for the “Comprehensive Course on Patents” Organized by The IP Press In Collaboration with S. Majumdar & Co. (October 5-November 23)

SpicyIP

OCTOBER 1, 2024

We are pleased to bring to you this sponsored post by IP Press on the extension of the registration deadlines for their Comprehensive Course on Patents, in collaboration with S. The IP Press presents the third cohort of the Comprehensive Course on Patents. Majumdar & Co.who are experts in the field of Patents.

Registration

Registration Intellectual Property IP Patent Drafting

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

The IPKat

JUNE 13, 2024

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.

Journalism

Journalism Invention Art Patent

Amendments to Canadian Patent Examination Rules

Nelligan Law

SEPTEMBER 19, 2022

Reading Time: 3 minutes Key changes to patent prosecution in Canada will come into effect October 3, 2022. These changes will impact the patent prosecution process in Canada by introducing excess claims fees, requests for continued examinations and conditional notices of allowance. Excess Claim Fees.

Patent

Patent Patent Prosecution Patent Application Intellectual Property

The Shift Towards Primary Examiners: Implications for Patent Prosecution

AI, Invention Harvesting and the Patent Backlog | IPWatchdog Unleashed

Trending Sources

Patent Protection for Entertainment Software Inventions

Enjoining Patent Prosecution

USPTO Patent Fee Increases Demand a New Approach to Maximizing Your Patent ROI

The USPTO Claims it Wants to Ensure ‘Robust and Reliable’ Patents – But Its Questions Imply Another Assault on Patent Owners

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

What You Should Know About Patent Prosecution: The Strategy Behind Building a Patent Estate The Strategy Behind Building a Patent Estate

Takeaways From the U.S. Patent and Trademark Office’s Artificial Intelligence and Emerging Technologies Partnership Series – Part One of Three

USPTO’s Final Rule on FY 2025 Patent Fees Drops Divisive Proposals for Across-the-Board Hikes

Patent Continuation Strategies Face Major Threat

Glaring Procedural Questions Arising Out of a Recent Patent Prosecution Proceeding

Central Tendency in US Patent Claim Counts

Insilico Medicine: Lessons in IP strategy from a front-runner in AI-drug discovery

OpenAI's granted large language model (LLM) patents

Cooperative v. Kollective CAFC Decision Demonstrates Virtues of Consistent and Candid Patent Prosecution and Litigation

Applicant Loses Appeal from USPTO Rejection of Cancer Patent Claims

Conception for Joint Inventors

Principals Moritz Ammelburg and Peter Fasse Author Managing IP Article “Coordinating Patent Prosecution in the U.S. and Europe”

UMKC School of Law Wins National Patent Application Drafting Competition

Germany: patent prosecution

Germany: patent prosecution

Track One Patent Applications: Accelerating Your Path to Patent Protection

DABUS Gets Its First Patent in South Africa Under Formalities Examination

USPTO Requests Input on Patent Eligibility from Critical Sectors Impacted by Current Law

China: patent prosecution

China: patent prosecution

Essential Elements Test for Reissues Patents

Data Show USPTO Patent Pro Bono Program is Working for Women and Minorities

The Language of Patents (Part I): Equipping Patent Applications for Pre-and Post-Grant Success

Developing and Patenting AI Inventions: 5 Things for Biotech Companies to Consider

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

It’s a Product Patent… It’s a Process Patent… It’s Product-by-Process Patent!

Takeaways From the U.S. Patent and Trademark Office’s Artificial Intelligence and Emerging Technologies Partnership Series – Part One of Three

How to Win a Patent Application Argument

Whither goest the patent troll?

Patent Eligibility Jurisprudence

Fed. Circ. In December: A Patent Prosecution History Lesson

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

Humanizing Technology: Back to Basics on DABUS and AI as Inventors

CALL FOR TRYOUTS – USPTO National Patent Application Drafting Competition

[Sponsored] Registration Deadline Extended for the “Comprehensive Course on Patents” Organized by The IP Press In Collaboration with S. Majumdar & Co. (October 5-November 23)

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

Amendments to Canadian Patent Examination Rules

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