Mr. IP Law

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By: John Russell

Latest from Mr. IP Law - Page 3

Oregon is Sasquatch country, and if you are lucky you can find some great little taverns in remote areas with their own take on the legend. However, not all likeness are of the same quality. Likewise, not all USPTO rejections are of the same quality, either. Today we review a recent PTAB decision reversing a…

Patent professionals are acutely aware of how seemingly small choices in wording can have profound impacts on the interpretation of claims. One such term that has garnered attention over the years, and continues to be relevant, is “provided.”Historically, claims have often been drafted in forms such as “providing element A” or “element B is provided…

In patent prosecution, restriction requirements are often a critical juncture in the process, and responding appropriately requires thoughtful consideration. Importantly, there is no “one-size-fits-all” approach to responding to restriction requirements. Each case is unique, shaped by a variety of factors, including the facts of the case, the client’s strategic goals, the landscape of prior art,…

Understanding the Formats of Patent Claims Involving Controllers: Best Practices for Patent Prosecution ProfessionalsPatent claims including a controller are ubiquitous in the information age. When dealing with such patent claims—particularly those programmed to perform specific functions—there is a variety of formats from which patent professionals may select. Each format can impact the scope of the…

Obtaining strong patent protection for AI inventions is an increasingly more difficult task. Not only is the volume of AI patent filings (and thus the corpus of prior art) growing exponentially, but AI inventions face additional hurdles in terms of Section 112 (written description/possession) and Section 101 (abstract idea). If all of that was not…

The appeal process before the Patent Trial and Appeal Board (PTAB) is often the last bastion of hope for applicants facing rejection and an examiner convinced of their position. Given the stakes, crafting a strong appeal brief can make all the difference. However, some practitioners fall into a trap: submitting an appeal brief that is…

Patent law is full of rules that often seem somewhat contradictory. For example, we all know that claims are interpreted in light of the specification, but should not import limitations therefrom. This post addresses the connundrum facing patent prosecution professionals when drafting arguments against a rejection that try to point out differences between the claimed…

In the legal world, litigants often make pleadings that are logically inconsistent, and the fact that they do so generally cannot be used, by itself, to attack said pleadings.  Consider a criminal defendant charged with murder, they may assert that they did not commit the murder, but even if they did, it was self defense.…