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
Written by Mark Terry Today’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Michelle illustrates just how useless the non-analogous art argument really is. Not to beat a dead horse, since much has been written about the uselessness of this argument by my fellow patent prosecution bloggers , but seriously, don’t use this argument anymore. I have yet to see it succeed even once. The Ex Parte Michelle case involved a telecommunications network claim rejected under 35 U.S.C. 103(a) for being obvious. The Appellant tried his hand at the “non-analogous art” defense. The Board summarily dismissed this argument in one sentence:
Written by Mark Terry Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner’s 35 U.S.C. § 102(e) anticipation rejection of a key Macrovision patent application directed to watermarks for videos. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the Ex Parte Ryan decision because it showed a rare smack-down of a Patent Examiner (as far as BPAI smack-downs go). At issue in this case was whether the cited reference, Collier, disclosed a method for inserting watermarks into a video. Collier, however, did not disclose inserting watermarks into a video but rather detecting watermarks in a video. In a rare
Written by Mark Terry Last week, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner’s 35 U.S.C. 103(a) obviousness rejection of Datacard Corporation’s key industry patent. As a practicing Miami Patent Lawyer who encounters 35 U.S.C. 103(a) obviousness rejections frequently, this case is interesting as it illustrates a significant practice pointer. The decision of the BPAI involved a vital Datacard Corp. patent that had been asserted defensively in multiple patent infringement lawsuits against rival Card Tech. Corp. In order to call the patent into question, Card Tech. Corp. instituted
Written by Mark Terry Using strong words, today the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner’s 35 U.S.C. §102(e) anticipation rejection of a Tokyo Electron invention, claiming that the Appellant’s attorney’s arguments alone held no weight. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the subtle drama of this decision and also learned something. At issue in Ex parte Willis , was a claim to a laboratory measuring device that measured spectral data. In response to the Patent Examiner’s 35 U.S.C. §102(e) anticipation rejection, the Appellant’s attorney, from the firm of Oblon Spivak, provided one particular
Written by Mark Terry As a Miami Patent Attorney with an active patent prosecution docket, I feel as if I’ve encountered every possible patent prosecution situation out there. But I was recently faced with a situation I had not previously encountered. At issue was my client’s patent application for project management software. The Examiner at the U.S. Patent and Trademark Office called me to ask if I would agree to an Examiner’s Amendment, to which I agreed. Subsequently, the Examiner issues an Examiner’s Amendment and a Notice of Allowance all at once. But after reviewing the Examiner’s Amendment, I noticed there were a
Written by Mark Terry In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner’s 35 U.S.C. sec. 103(a) obviousness rejection of a key Hewlett-Packard software invention, but came up with a new rejection of its own – a 35 U.S.C. sec. 101 non-statutory subject matter rejection. As a Miami Patent Attorney that deals with Patent Office rejections related to software patents and software inventions almost daily, this case is instructive because it illustrates the case law on non-statutory subject matter and the process of dealing with the BPAI. The HP invention involved a software
Written by Mark Terry In one of its first decisions of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner’s 35 U.S.C. §103(a) rejection of a key Verizon invention. As a Miami Patent Attorney, this case was interesting because it illustrates how a 35 U.S.C. §103(a) obviousness rejection can be reversed on appeal to the BPAI. At issue was a Verizon claim that disclosed software for an LDAP server that receives a request in first protocol format and then converts retrieved information from a second protocol format to the first protocol format. The Examiner rejected the Verizon claim
Written by Mark Terry Last week, the Federal Circuit affirmed a D.C. District Court decision extending the patent term of a Wyeth Alzheimer’s drug patent due to U.S. Patent and Trademark Office (USPTO) delay. As a Miami patent lawyer that deals with issued patents often, this case illustrates how a patent holder can use USPTO delays to their advantage by lengthening their patent term accordingly. At the crux of this dispute between Wyeth Pharmaceuticals and the USPTO is a process for calculating the amount that a patent term is adjusted under the American Inventors Protection Act, 35 U.S.C. 154(b).
Written by Mark Terry When are your patent claims obvious in light of the prior art? Is it non-obvious to simply combine two known items in a new way? What is the legal criteria for non-obviousness? As a Florida patent attorney with an active patent prosecution docket, I deal with these issues on a daily basis. Today, the Board of Patent Appeals and Interferences at the United States Patent and Trademark Office issued a straightforward and easy-to-understand decision on this issue. Today’s decision in the case of Ex parte Constantinidis relates, among other things, to the issue of whether the claims of the Appellant were
Written by Mark Terry Today the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner’s 35 U.S.C. sec. 103(a) obviousness rejection because the Examiner did not adequately explain why the ordinary artisan would have combined the cited prior art references. As a practicing Miami Patent Lawyer who responds to 35 U.S.C. sec. 103(a) obviousness rejections weekly, today’s decision of the BPAI is instructive because it illustrates a method for attacking obviousness rejections. The patent application at issue belongs to International Specialty Products, a global supplier of pharmaceutical products. The Patent Examiner found multiple prior art references
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