One Weird Trick to Beat Alice Rejections (Examiners HATE This!)
The Alice v. CLS Bank has had a tremendous impact on how the patent office treats applications for business method inventions. Indeed, since the Supreme Court’s decision in Alice, the allowance rate for class 705 (Data Processing: Financial, Business Practice, Management, or Cost/Price Determination) dropped from a pre-Alice high of 31.2% in 2013, to 23.5% […]
Reasons of Low Quality Patent Filings and Ways to Avoid them
A few months ago, there was a post on LinkedIn by a renowned IP strategist expressing her repugnance on the falling quality of patents being drafted by IP attorneys. In her words, Just had to tell a new client that his prestigious big firm attorney is churning his patent work by filing junk responses in […]
How to Increase Your ROI by generating Star patents in your portfolio?
The beauty of a crown is enhanced by its jewels. The gold, no matter how pure, just gives structure to the crown. It is the precious stones that make a crown, a crown. The same applies for a patent portfolio. A patent portfolio, no matter how huge, is deemed valuable only if it has high […]
How Microsoft and IBM Are Killing Potential of These Patents
Corporations continuously invest in R&D to maintain their competitive edge. A good portion of this investment further goes into building a patent portfolio that helps the company in a number of ways; for example, it defends R&D investments, provides the freedom to move in a market, help in collection and avoiding a licensing fee, etc. Do […]
Do your competitors have a better return on the research investment?
Have you ever thought how much does a single patent actually cost? Of course, it’s easy to calculate the average filing and maintenance cost of a patent but here I’m discussing the actual cost incurred to a company for inventing something and then getting it protected. An invention is a result of several hours and […]
Does Your Organization have an Intellectual Property Vision?
Surviving in this cut-throat business era is not an easy task. It takes a visionary whose thought process and efforts can take a small concept to a great success. Faster is not faster if everyone is providing the deliveries at the same rate and simple is not simple if all the other designs available on […]
The Examiner Office Action Report is Your Next Step towards Smart Prosecution
Chess, when played beyond a basic skill level, is not a game about pieces; it’s about reading your opponent. This saying applies to patent prosecution, where each written document has an inherent risk of introducing rejections. Further, extended arguments are generally more expensive since they require additional time to draft and edit. For this reason, […]
5 Things to Do When An Examiner Rejects Your Patent
Joe is an inventor. Like most inventors, Joe has worked obstinately and carefully towards designing an invention which he believes is going to revolutionize the world. Joe wants to claim the invention to prevent others from stealing his intellectual property and consequently decides to get a patent. But one thing that Joe doesn’t know is […]
Smart Patent Prosecution – How to Increase Grant Rate of a Patent?
Getting a patent application granted on the first go is a rare phenomenon. According to statistics, of all the patent applications received by the USPTO, over 90% are initially rejected. Thus, getting a first-time rejection is quite normal. What follows next is an immense struggle — Convincing the examiner with facts and logic which consumes its […]
Why 90% of Patents Are Valueless?
After several years as a commercial litigator, a few more years with a prominent IP (intellectual property) firm in Washington, D.C., I spent a fair amount of time as in-house patent counsel to a small licensing and IP monetization firm. In my position, I had the opportunity to review hundreds of patent portfolios that were […]
The Art of Smart Patent Filing – Strategies Inspired from Sun Tzu
Stephen King once said, “Good books don’t give up all their secrets at once.” Some books are written in such a way that the more times you read them, the more secrets you uncover. One of those books is Art of war by Sun Tzu. The one size fits all book. Every time you read […]
A Ray of Hope Under The Alice Decision
The recent verdict of Motio Inc. vs. Avnet Inc. has come up as an accurate example of bypassing invalidation based on the Alice decision. Background – Avnet challenged Motio’s U.S. Patent No. 8,285,678 stating that it claims an abstract idea and cannot be patented as per Alice ruling. US’678 is directed to “version control” of […]
Patent Prosecution Strategy: Negative Claim Limitation Sounds Positive Now in Patents!
Claiming what you haven’t invented can get you a patent granted. Surprised? Well, this could be true. Want to find out how? Read on: First of all, let me shed some light on what a Negative claim limitation is? It is a limitation added solely to exclude a few elements of the invention, or in […]
Smart Prosecution: How to File More Patents for your Clients?
Do you know how smart devices work? They do many things even before you instruct them to do so. For example, Google Assistant can set a reminder automatically after reading your email about an upcoming meeting. Cool, isn’t it? Smart prosecution stresses on a similar thought where you exceed your client’s expectations. To be precise, it […]
Smart Patent Prosecution – How to Save Client’s Time and Money?
hbspt.cta.load(1791848, ‘5a9b267c-02a7-4033-a894-fa9187d5e4d6’, {}); Over the past few years, the Patent Office has taken multiple initiatives – Track One examination, Accelerated Examination (AE), Full First Action Interview Pilot Program, and Patent Prosecution Highway (PPH)– to combat application backlog and expedite patent examination procedure. These accelerated programs, without doubt, speed up the prosecution process; however, they are also […]
Alice Based Rejection – Now the Protocol Patents are under Threat
In a lawsuit of 7 patents, Apple passed a motion asserting 2 of Ericsson’s patents as invalid based on 35. U.S.C.§ 101. In the light of Alice ruling, Apple stated that PROTOCOL patents are similar to software patents (abstract concept) and hence, are not valid. Here are few examples of patented protocols which according to […]
