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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
January 13, 2020

Not Everyone Knows What is Typical.

John Russell
January 13, 2020
Not Everyone Knows What is Typical.

Just because something is called “typical” does not mean its scope is clear to the USPTO.

Comment
John Russell
January 9, 2020

AFCP 2.0 - Take Full Advantage

John Russell
January 9, 2020
AFCP 2.0 - Take Full Advantage

An example of how to ensure proper consideration of AFCP requests.

Comment
John Russell
January 7, 2020

Who has Ordinary Skill in the Art?

John Russell
January 7, 2020
Who has Ordinary Skill in the Art?

The PTAB does not take kindly to attacks on the Examiner’s technical skill level.

2 Comments
John Russell
January 3, 2020

Analogous and Non-Analogous Art

John Russell
January 3, 2020
Analogous and Non-Analogous Art

Read about two sides of the analogous art coin.

Comment
John Russell
December 21, 2019

Facebook's Abstract Holiday Stories

John Russell
December 21, 2019
Facebook's Abstract Holiday Stories

Enjoy some social media stories courtesy of Facebook and the PTAB

Comment
John Russell
December 19, 2019

Examiner Speculation

John Russell
December 19, 2019
Examiner Speculation

Examiner speculation, if present, can be a weak point of a rejection on appeal, as illustrated in a recent PTAB decision.

Comment
John Russell
December 16, 2019

New Informative PTAB Decision on Speech Recognition Neural Network

John Russell
December 16, 2019
New Informative PTAB Decision on Speech Recognition Neural Network

A new informative decision on Section 101 shows how an invention using a neural network is patentable under Section 101 and the most recent USPTO guidelines on subject matter eligibility.

Comment
John Russell
December 5, 2019

Interplay Between Possession and Enablement

John Russell
December 5, 2019
Interplay Between Possession and Enablement

United Technologies tackles Section 112 rejections relating to enablement and possession regarding a claim limitation for an open-ended gear ratio.

Comment
John Russell
December 5, 2019

Obviousness is not established by addressing a problem the primary reference already solves

John Russell
December 5, 2019
Obviousness is not established by addressing a problem the primary reference already solves

If the prior art already addresses the motivation to combine, you have a hindsight-based rejection.

Comment
John Russell
December 2, 2019

That's not my invention

John Russell
December 2, 2019
That's not my invention

Why patent applications sometimes includes things those skilled in the art my think have nothing to do with the “invention.”

Comment
John Russell
November 27, 2019

Section 101 at the PTAB - Slot Machines and Technical Advantages

John Russell
November 27, 2019
Section 101 at the PTAB - Slot Machines and Technical Advantages

The PTAB uses the specification’s explanation of technical issues addressed by the invention to find that the claims overcome Section 101 by integrating an abstract idea into a practical application under the USPTO’s Revised Eligibility Guidelines.

Comment
John Russell
November 12, 2019

Hindsight and Citation to Evidence in the Record

John Russell
November 12, 2019
Hindsight and Citation to Evidence in the Record

If you allege an examiner is using advantages from the specification, make sure you cite to specification for support.

Comment
John Russell
November 5, 2019

AI Tools - The Future of Patent Prosecution

John Russell
November 5, 2019
AI Tools - The Future of Patent Prosecution

AI patent/article drafting - which one is easier?

Comment
John Russell
October 31, 2019

Responding to Restrictions

John Russell
October 31, 2019
Responding to Restrictions

Restrictions - how to think about them and respond.

Comment
John Russell
October 25, 2019

Halloween at the PTAB

John Russell
October 25, 2019
Halloween at the PTAB

Halloween at the PTAB can be a bit scary when dealing with obviousness

Comment
John Russell
October 23, 2019

Your Claims are Too Broad

John Russell
October 23, 2019
Your Claims are Too Broad

There is no such thing as “broad claims” or “narrow claims” in the abstract. It’s all relative to the state of the art.

Comment
John Russell
October 16, 2019

New Informative PTAB decisions on Design Choice

John Russell
October 16, 2019
New Informative PTAB decisions on Design Choice

Design Choice - compare and contrast two new informative decisions from the PTAB.

Comment
John Russell
October 13, 2019

Tips for Reducing RCEs

John Russell
October 13, 2019
Tips for Reducing RCEs

Read this post to find some tips and tricks on avoiding RCEs

2 Comments
John Russell
October 11, 2019

Section 112(f) - Friend or Foe?

John Russell
October 11, 2019
Section 112(f) - Friend or Foe?

Section 112(f) claims might be something to reconsider - precisely because infringers seem to think its still a scary benefit for patent applicants.

Comment
John Russell
October 8, 2019

Patent Searching

John Russell
October 8, 2019
Patent Searching

Patent searching for drafting is not the same as patent searching for examination. Special thanks to Eugene Lhymn for the inspiration related to this post.

1 Comment
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