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Patent Examination Types, Part II

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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.
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Disrespecting Software

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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.
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Patent Examination Types, Part I

Patent Examination Types, Part I published on

During my time in patent prosecution, I have encountered many good patent examiners – those whose office actions are clear, persuasive, technically accurate, and consistent with law. I deeply appreciate these examiners’ efforts, because it reveals a clear course of action to recommend to my client – even if that recommendation is an abandonment.

On the other hand, occasional puzzlement and frustration arise from office actions that are, in various ways, unsatisfying. Over time, I have noticed consistent patterns of approaches to examination that evoke this reaction. Of these examination styles – the “dirty dozen” (edit: ended up being a baker’s dozen) – this article will cover the first three.
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The Challenges of U.S. Patent Examination

The Challenges of U.S. Patent Examination published on

I’d like to begin my commentary about the patent office with an overarching observation – one that I intend to emphasize throughout this weblog:

On the whole, U.S. patent examiners are good people doing good work under difficult circumstances.
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USPTO Talk

USPTO Talk published on

When I began practicing patent law, my conceptual model of the patent examination process was an objective technical comparison of claimed inventions with prior art. Notably, I understood this process to be straightforward, legally and technically accurate, and – most of all – consistent and predictable. For a particular claim, the patent system should identify the same references and produce the same answer, irrespective of the particular art unit, examiner, or circumstances of the application. The internal mechanics of the USPTO, of examiners’ day-to-day lives, should be largely irrelevant to the outcome of an application.

7+ years of patent prosecution have radically changed my understanding of the patent process.
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