FOLLOW THE PLUS IP BLOG

Categories

WHAT’S IN A REEXAM – TWO PART SERIES

Written by: Mark Terry PART TWO In general, a reexamination is the process by which a patent owner or third-party requests that a patent’s claim(s) be reviewed against other patents or publications (prior art) by the USPTO’s Board. A patent owner may initiate the process to ensure that they have a valid patent. Subsequently, the patent owner can either pursue infringers or sleep well at night knowing that the USPTO has affirmed the validity of their patent. On the other hand, a third party may want to request a reexamination to question the validity of a patent in order to

Read More »

TTAB Decides: “Heavy Burden” in Proving Fraud on USPTO

Written by: Mark Terry The Trademark Trial and Appeal Board (TTAB) has issued another decision highlighting the “heavy burden” in proving fraud on the USPTO during prosecution of a trademark application (Ex Parte Metal Gear). As a Florida Trademark Attorney, I constantly monitor TTAB decisions for golden nuggets that help me prosecute my client’s rights at the USPTO. The holding in this case illustrates how a “fraud on the USPTO” claim can and cannot be won. The Court in In re Bose Corp., 476 F.3d 1331, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), set out the relevant standard for proving fraud.

Read More »

Board of Patent Appeals Issues Key Claim Construction Decision

Written by: Mark Terry Last week, the Board of Patent Appeals and Interferences (BPAI) upheld a Patent Examiner’s rejection under 35 U.S.C. § 102(e) of a patent application for an invention that was claimed too broadly. As a Miami Patent and Trademark Attorney I follow BPAI decisions on a daily basis, and I constantly seek wisdom from the mistakes of others. At issue in Ex parte Tosey was a claim to enhance the initiation of a coupling between a wireless digital device and an “interconnected network”. The applicant argued that the terms “interconnect network” and “wireless network” are not synonymous as pertains to a

Read More »

Reciting Ranges in Chemical Patent Applications and the 112 Rejection

Written by: Mark Terry What happens when you only disclose a larger range of values in the specification and later amend the claims to recite a smaller range of values encompassed by the larger range? Do you run into a 112 written description problem? That was the issue in today’s Ex Parte Moraes Barros (BPAI 2010-006399) decision at the Board of Patent Appeals and Interferences (BPAI) where a Patent Examiner was reversed. As a Florida Patent Attorney, I stay updated on the latest decisions of the BPAI, so as to provide my clients with the best representation on appeal. In the Moraes Barros case, the

Read More »

How Not to Use the “No Motivation” and “Teaching Away” Arguments When Responding to a 35 U.S.C. 103 Rejection – Florida Patent Lawyer Blog

Written by: Mark Terry The photo below is the ceiling of my gym – my local Crossfit box in Miami. At least a couple of times a week, I collapse on the floor of that gym after completing a WOD, heart pounding, and try to catch my breath. I lay there waiting for my pulse to calm down, as I contemplate life, reality and why we are all here. To say I’ve spent days, cumulatively, looking at that ceiling, would be an understatement. I could close my eyes and tell you exactly where each pipe, crack, expansion joint and beam is located on that

Read More »

WHAT’S IN A REEXAM – TWO PART SERIES

Written by: Mark Terry PART ONE             The USPTO and Congress have been looking for ways to reduce the damage done by patent trolls and their often-times frivolous lawsuits. One way of doing this has been by restructuring the inter partes reexamination procedure into an inter partes review (IPR) process. This seemingly minor change may have some major implications on the future of patent litigation. The mix of players that fight for the billions at stake in federal patent infringement cases include inventors, manufacturers, patent trolls, patent consulting firms and investment firms. Each can derive a profit from a patent

Read More »

Non-Obviousness Arguments That Don’t Work at the Board of Patent Appeals – Florida Patent Lawyer Blog

Written by: Mark Terry Last week’s Board of Patent Appeals and Interferences (BPAI) decision of Ex Parte Lim , which affirmed a Patent Examiner’s 35 U.S.C. 103 obviousness rejection, teaches an important lesson – obviousness rejections must address both references – not just one. As a Miami Patent Attorney that reads BPAI decisions frequently, I’m surprised that any practitioners even try this argument anymore. The case of Ex Parte Lim involved a mobile communications network, such as those used by cell phone providers. The Examiner issued a 35 U.S.C. 103 obviousness rejection based on two references – Lipsanen and Siren. The Appellant argued that Lipsanen did

Read More »

SHOULD PATENTS BE TREATED AS JUST ANOTHER INVESTMENT VEHICLE?

Written by: Mark Terry In light of all of the news about patent reform legislation and the backlash against Non-Practicing Entities (NPE) [you know … patent trolls], did you know that large corporations like Microsoft, Sony, Apple, Intel, and Google invest or have invested in patent funds? Why do they do it? Has it helped fuel infringement lawsuits? We explore these issues here.   Intellectual Ventures (IV) has opened funds to investors since 2000 and is currently courting investors to invest in its planned $3 billion fund for investing in patents. Microsoft and Sony have subscribed, but Intel and Apple

Read More »

How do you respond to a copyright takedown notice?

Written by: Mark Terry “I just received a copyright takedown notice. What do I do?” As a Board-Certified Specialist in Intellectual Property Law, this is a common question I hear– at least several times a month. Usually, the item in dispute is a document or photo that is being used on a client’s website. And usually, the copyright takedown notice includes a scary letter that threatens to sue for copyright infringement and hundreds of thousands of dollars. It ca instill fear in your typical law-abiding citizen who has never been involved in a lawsuit. Don’t panic – this is what you

Read More »

THE PLUS IP FIRM

We are board-certified intellectual property attorneys, inventors, and engineers that help small-size inventors, entrepreneurs, and businesses register and protect patents, copyrights, and trademarks so you can profit from them faster.

Call Now: 786.443.7720