Posts Categorized: Patent Drafting and Claim Writing

Claiming Strategy: Broad or Narrow? Strategies Come Full Circle

Patent prosecution strategy has shifted in the last few years, but I think a prudent strategy may be to write a very good specification, claim broadly, and use divisional applications as an insurance policy.

In the Old Days, (prior to Festo), there was a general strategy of claiming very broadly in the first iteration of a patent application. The examiner would whittle away at the claims and the applicant would argue back and forth until a compromise was reached.

Then came Festo.

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Use Patents to Protect a Business, Not to Protect an Idea

Are you selecting the right things to patent? It is okay to start with the Big Inventive Idea, but look at the business as a whole to select what actually gets protected.

People come to me with inventive concepts that they want to patent. The engineer or inventor in them relishes the “cool factor” that comes from that incredible moment of conception of the concept. My experience is that the excitement and euphoria over the invention is often palatable years afterward. In fact, there are several of my own inventions that to this day bring goosebumps when I think of that very moment when I came up with the concept.

These concepts are often the ones written up in invention disclosures or used by the independent inventor to start a business.

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Claiming Business Method Patents: Taking Advantage of Long Pendency

I have often wondered the role of business method patents. Today, I was able to attend a very interesting talk by John Doll, the Commissioner for Patents. One thing that the Commissioner pointed out was that there is a 111 month backlog for business method patents. That is almost 10 years worth of backlog. Is this a problem or an opportunity?

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Who Said The Patent Office Was Slow – My Application Only Took 71 Days for Allowance

Maybe things are changing at the US Patent Office.

I filed an original design patent on February 6 of this year and received a notice of allowance dated April 18. That is a mere pendency of 71 days. It will likely take the PTO longer to get the application through the publication process than the entire examination process. I thought that it took longer than that just to get through the Office of Initial Patent Examination.

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