The first post about patent examination types focused on examination tactics that amount to a wholesale dismissal or avoidance of the disclosed invention. In those cases, the examiner isn’t even considering the contents of the claim. Nothing that you put in the claim will cause the examiner to alter the outcome or rationale.
At the other end of the spectrum, some examination tactics focus on the contents of the claim in excruciating detail. Through a variety of tactics, these examiners endeavor to shift the conversation away from technology, logic, and the ordinary rules of language, and into the realm of linguistic gamesmanship.
Continue reading Patent Examination Types, Part II
Chess, when played beyond a basic skill level, is not a game about pieces; it’s about reading your opponent.
Over time, I have reached a similar realization about patent prosecution.
Continue reading The Rejection Behind the Office Action
This week’s intellectual property news is dominated by the Supreme Court oral argument in Alice Corp. v. CLS Bank, over the patent eligibility under 35 U.S.C. 101 of an invention in the field of financial transactions. The Supreme Court’s decision in this case will (or, at least, might) address several key questions of wide-ranging importance, including the definition of the term “abstract,” in the context of the utility requirement of patent eligibility.
The topic of this post is about the attitudes about software, as a technology, that appeared during the Alice Corp. v. CLS Bank oral argument, and that pervade the field of patent law.
Continue reading Disrespecting Software