A prior art reference that teaches away from a claimed invention cannot be used to support an examiner’s rejection or a party’s allegation of invalidity.[1]  Knowing the different ways in which a reference may teach away and being able to identify the facts that weigh in favor of a teaching away finding is critical to [...]

On March 20, 2012, the Supreme Court published its opinion deciding Mayo v. Prometheus. In its decision, the Supreme Court cherry-picked ideas and principles from select cases to set forth a new analysis for determining patentable subject that is broad enough to have serious unintended consequences. The new analysis consists of two steps: 1) Determine [...]

In the In re Staats case decided by the Federal Circuit on March 5, 2012, the Federal Circuit held that 35 U.S.C. 251 allows “a continuing reissue application to add broadened claims after section 251’s two-year limit where the broadened claims are unrelated to the broadened claims filed within the two-year limit.”  The In re [...]

Section 800 of the Manual of Patent Examining Procedure (MPEP) is directed to two topics – (1) Restriction in applications filed under 35 U.S.C. 111 and (2) Double Patenting.  The inclusion of these two topics together within Section 800 is not an accident.  Rather, these two topics are related as opposing sides to a similar [...]

by Rachel Jacques Domain name disputes under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) are a growing medium for trademark owners to police use of their trademarks online.  This article is an introduction to the UDRP as established by the Internet Corporation for Assigned Names and Numbers (ICANN) including the elements that must be [...]

by: Andrew J. Fischer and David A. Jones January/February 2012 Landslide Recent articles have argued for harmonization of claim construction procedures performed during the prosecution of patent applications at the United States Patent and Trademark Office (“USPTO”) and during the litigation of issued U.S. patents.  These articles overlook the purpose and necessity of the dual [...]