Tag: Software Patents


Patent Reform: Will It Protect Your Inventions?

Written by Mark Terry The Patent Transparency and Improvements Act (Bill, S. 1720), seeks to improve transparency and to remedy problems associated with patent trolls and others that file frivolous lawsuits using their patents. Trolls are turning out to be a formidable opponent to the patent reform process by engaging in some heavy lobbying. Trolls have cost companies billions of dollars due to weaknesses in the patent system. As a practicing patent attorney I walk a fine line between writing a claim that is so broad it is enforceable, and writing a claim that is so narrow, an  infringer can

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Tools for Fighting a 102 Anticipation Rejection

Written by: Mark Terry Today I came across a nice little Board of Patent Appeals case that outlines an additional tool that can be used to fight 102 anticipation rejections, especially when procuring software patents. Specifically, this case addresses a common situation: you receive a 102 rejection where the Examiner appears to have done a simple text search for each of your claim elements and found them all in disparate parts of one reference. The case of Ex parte Putnam (Appeal No. 2010-001668) involved a software process for migrating databases. The Patent Examiner found all of the elements of claim 1 in

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Software Patents: How to Lose an Obviousness Argument

Written by: Mark Terry In a straightforward decision today, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s obviousness rejection of a software invention based on a common prosecution mistake – the Appellant arguing limitations that are not in the claim. This post highlights a basic requirement of responding to Examiner rejections, especially when procuring software patents. The case of Ex parte Kreiner (Appeal No. 2010-004976) involved a software invention used to design circuits. The disputed claim included the following limitation: “a software-based development environment for designing circuits or systems.” In responding to a 103 obviousness rejection, the Appellant argued that

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