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Mr. IP Law

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April 18, 2022
John Russell
The Illusion of Quality at the USPTO

The Illusion of Quality at the USPTO - its clear from the USPTO’s very own explanation of the program.

The Illusion of Quality at the USPTO
March 21, 2019
John Russell
New Informative PTAB Decision on 101

A new informative decision on 101 from the PTAB (with a dissent).

New Informative PTAB Decision on 101
January 28, 2019
John Russell
System Diagnostics and Section 101

The PTAB confirms in a Honda appeal that system diagnostic inventions do not need to perform an action in response to the diagnostic determination to be patent eligible.

System Diagnostics and Section 101
November 28, 2018
John Russell
Amicus Brief Regarding Prosecution Re-opening ...

Read the brief here!

Amicus Brief Regarding Prosecution Re-opening at the Federal Circuit
July 16, 2018
John Russell
PLEA FOR YOUR HELP

The USPTO is Breaking the Law - Read how and lend your support to the cause.

PLEA FOR YOUR HELP
John Russell
May 17, 2018

Reversed, with authority

John Russell
May 17, 2018
Reversed, with authority

The PTAB shows that the notice requirement of Section 132 does have teeth. Read about a particularly egregious rejection from art unit 3747.

Comment
John Russell
May 16, 2018

Rejections based on the "Capable Of" Test

John Russell
May 16, 2018
Rejections based on the "Capable Of" Test

Do not let examiners slip a rejection by you based on the idea that the prior art is capable of performing claimed actions of a method.

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John Russell
May 14, 2018

Tips and Tricks: Filing a PPH Request in the United States

John Russell
May 14, 2018
Tips and Tricks: Filing a PPH Request in the United States

PPH requests are a great way to move your case to allowance in the US. Learn some tips to make the process even smoother.

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John Russell
May 8, 2018

Great IP Advice from Jimmy Buffett

John Russell
May 8, 2018
Great IP Advice from Jimmy Buffett

Don’t wait until it is too late to secure your trademark rights.

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John Russell
April 30, 2018

Arguing Mutual Exclusivity With Respect to Restriction Requirements

John Russell
April 30, 2018
Arguing Mutual Exclusivity With Respect to Restriction Requirements

Learn about mutual exclusivity and the variable definitions applied by the USPTO in restriction practice.

Comment
John Russell
April 26, 2018

Vanda, Part II

John Russell
April 26, 2018
Vanda, Part II

Following up on our previous post discussing Vanda, some interesting issues on conditional language are considered.

Comment
John Russell
April 24, 2018

Gorsuch - A Patent Attorney's Hero

John Russell
April 24, 2018
Gorsuch - A Patent Attorney's Hero

Oil States - Gorsuch, joined by the Chief Justice, writes a strong dissent that calls the majority’s reasoning into serious questions. Law students will likely be studying this one for years to come.

Comment
John Russell
April 23, 2018

Wonderland and Smith -- Not so fast PTAB

John Russell
April 23, 2018
Wonderland and Smith -- Not so fast PTAB

The Federal Circuit gives more guidance to help reign in the Broadest Reasonable Interpretation.

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John Russell
April 18, 2018

Vanda and Patent Eligibility for Diagnostics

John Russell
April 18, 2018
Vanda and Patent Eligibility for Diagnostics

In Vanda, the Federal Circuit lays out a path for patenting diagnostics inventions post Mayo.

Comment
John Russell
April 13, 2018

Breath of Fresh Air

John Russell
April 13, 2018
Breath of Fresh Air

The new USPTO Director delivers a powerful speech indicating a new direction for the US Patent Office.

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John Russell
April 9, 2018

Rise Up or Roll Over - which is best when responding to restrictions?

John Russell
April 9, 2018
Rise Up or Roll Over - which is best when responding to restrictions?

We review a case illustrating a great way to win a petition against a restriction by using the Office's own actions to prove there is no search burden.

Comment
John Russell
April 6, 2018

Important Limits from the Federal Circuit on the use of "Ordinary Creativity"

John Russell
April 6, 2018
Important Limits from the Federal Circuit on the use of "Ordinary Creativity"

Don't let USPTO examiners get away with a fast one by relying on ordinary creativity in a way that conflicts with recent Federal Circuit case law.

Comment
John Russell
April 3, 2018

More on Possession of Negative Claim limitations

John Russell
April 3, 2018
More on Possession of Negative Claim limitations

A recent Board decision for a Cabela's invention shows how much support is really needed to add "negative" claim limitations that are not word-for-word from the specification.

1 Comment
John Russell
March 27, 2018

Tinder v. Bumble Follow-Up -- GUI Design Patents Sure do Come in Handy

John Russell
March 27, 2018
Tinder v. Bumble Follow-Up -- GUI Design Patents Sure do Come in Handy

In Tinder's suit against Bumble, the power of design patents in the software industry is on full display.  

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John Russell
March 22, 2018

Attacking “obvious to try” rejections

John Russell
March 22, 2018
Attacking “obvious to try” rejections

Attacking obvious to try rejections that use the inventor's own recognition of how to break things down.

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John Russell
March 21, 2018

Tinder v. Bumble -- Even a Software Company Sometimes Needs to Use Its IP

John Russell
March 21, 2018
Tinder v. Bumble -- Even a Software Company Sometimes Needs to Use Its IP

Tinder sues Bumble, including using one of its recently issued Utility Patents.

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John Russell
March 15, 2018

PTAB Dissents in Ex Parte Appeals

John Russell
March 15, 2018
PTAB Dissents in Ex Parte Appeals

Dissents are rare in Ex Parte appeals at the PTAB. A recent Section 101 appeal illustrates that sometimes even a PTAB judge thinks the PTAB goes too far in affirming Section 101 rejections.

Comment
John Russell
March 13, 2018

10,000,000

John Russell
March 13, 2018
10,000,000

The USPTO gears up for U.S. 10,000,000.

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John Russell
March 8, 2018

NXP Semiconductors handily overcomes "election by original presentation"

John Russell
March 8, 2018
NXP Semiconductors handily overcomes "election by original presentation"

Do not let examiners get away with an improper restriction that limits your ability to make amendments that avoid the cited prior art.

Comment
John Russell
March 5, 2018

Why so difficult?

John Russell
March 5, 2018
Why so difficult?

We review an example of how some examiners try every trick in the book in the hopes that the applicant will get frustrated and give up.

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