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U.S. and EPO approaches to prior art
How analogous art and the problem-solution approach lead to different prosecution choices.
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EUROPE ↔ UNITED STATES
U.S. and European design protection
Coordinate protection for product appearance across the two regimes.
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U.S. continuation strategy
Understand how pending U.S. applications preserve future claim opportunities.
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Choosing an ISA After the Korean Fee Increase: A practical comparison for US PCT applicants
Korea’s announced increase in its U.S.-dollar international search fee from $783 to $867, effective November 1, 2026, gives U.S. PCT applicants a reason to reassess ISA selection based on costs through the intended national-stage entry. Under the article’s…
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Make Web ADS the Default for Cleaner Patent Filings
Making the USPTO’s Web Application Data Sheet (Web ADS) the default for supported utility and design filings can reduce preventable errors and the need for corrected ADS submissions after the filing receipt arrives. Guided entry, parent-application autofill,…
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Restriction and Unity of Invention in the United States and China: A comparative guide for patent practitioners
U.S. restriction practice and Chinese unity requirements determine which inventions may be examined together, but their different legal standards can produce different prosecution paths for the same disclosure. This article explains each system through…
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Using Rule 132 Declarations in Design Patent Prosecution
Declarations under 37 C.F.R. § 1.132 can strengthen design patent applications by supplying evidence addressing ornamentality, obviousness after LKQ, and the connection between commercial success and the claimed design. Their persuasive value depends on…
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Small Entity Errors After Patent Issuance: Validity Correction and Enforceability
Paying small-entity fees when undiscounted fees were required does not automatically invalidate a U.S. patent, but the error can create correction obligations, financial exposure, and enforceability risks. The analysis begins with eligibility when the…
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One Disclosure, Two Standards: PCT Unity of Invention and U.S. Restriction Practice
PCT unity of invention and ordinary U.S. restriction practice apply different tests for determining which inventions may be examined together. PCT unity turns on a shared inventive technical relationship, while ordinary U.S. restriction requires independent…
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PIER at the USPTO: Application Selection and Patent Term Consequences
The USPTO’s PCT Informed Examination Request (PIER) pilot requires selected U.S. national-stage applicants to choose whether to proceed with examination, defer examination for twelve months, or expressly abandon the application after considering the…
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Taking Over an Unpublished Patent Application Without a Confirmation Number
A missing confirmation number can complicate the transfer of an unpublished patent application even when the client has provided a properly executed power of attorney. For ordinary confidential U.S. national applications, the missing number does not itself…
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Electronic Service in Patent Reexamination: Why the USPTO Should Adopt the IPR Model
The USPTO should amend its reexamination rules to expressly permit electronic service by agreement, following the model already established for inter partes review. Although reexamination papers may be filed electronically, 37 C.F.R. § 1.248 provides no…
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Electronic Patents, Unexplained Delays: The Case for Issuance Transparency
The USPTO’s transition to official electronic patent grants has eliminated physical delivery of the legal grant, although optional ceremonial paper copies remain available. A practitioner-reported USPTO estimate of approximately four months between issue-fee…
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Inventor Testimony and Corroboration After the New SMED Guidance
The USPTO’s September 29, 2026 guidance on Subject Matter Eligibility Declarations (SMEDs) provides an opportunity to distinguish legally required corroboration from the factual support that makes inventor testimony persuasive. Drawing on Supreme Court and…
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Returning IPR Merits Determinations to the PTAB
Returning merits institution determinations in inter partes review to panels of administrative patent judges should establish a clearer allocation of decisional responsibility within the United States Patent and Trademark Office. The Director-centered process…
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Using DocuSign at the USPTO: A practical guide for patent applicants and practitioners
The USPTO permits DocuSign, Acrobat Sign, and comparable qualifying platforms for a broad range of patent documents, including inventor declarations, powers of attorney, prosecution papers, and evidentiary declarations. Under 37 C.F.R. § 1.4(d)(4), the…
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Using PCT Chapter II Before National Phase Entry
Chapter II of the Patent Cooperation Treaty offers applicants an optional opportunity to address examination objections, amend the application, and obtain an international preliminary examination report before national phase entry. Its greatest value arises…
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Seeking Discretionary Denial in Ex Parte Reexamination: Patent owner timing and procedure
Section 325(d) permits the USPTO to reject an ex parte reexamination request that presents the same or substantially the same art or arguments previously presented to the Office, but repetition alone does not establish an entitlement to relief. For patent…
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Information Disclosure Statements: From Filing Through Issuance
Effective information disclosure statement (IDS) practice requires coordinating the duty to disclose known, material, noncumulative information with the procedural requirements for obtaining examiner consideration. 37 C.F.R. §§ 1.56, 1.97–1.98 (2026). This…
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After-Final Practice at the USPTO and Reexamination Before CNIPA: A comparative guide for United States and Chinese patent practitioners
This article compares after-final practice at the United States Patent and Trademark Office (USPTO) with reexamination before the China National Intellectual Property Administration (CNIPA), using each system’s familiar procedures to explain the other to U.S.…
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The Reference Arrived After the Issue Fee: A Practical Guide to QPIDS
The Quick Path Information Disclosure Statement (QPIDS) program provides a conditional procedure for obtaining examiner consideration of newly identified information after the issue fee has been paid but before the patent issues. Its use depends on a truthful…
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Correcting Patent Applications After Allowance Under Rule 312: A practical guide to timing, discretion, procedural alternatives, and enforcement consequences
A notice of allowance does not eliminate prosecution risk; it compresses the time available and narrows the procedures for correcting an application before issuance. Rule 312 offers a final, low-disruption opportunity to make a supported correction, but entry…
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The Doctrine of Equivalents in the United States and Selected European Forums
Patent protection in the United States, the United Kingdom, Germany, and the Unified Patent Court can extend beyond the ordinary meaning of the claims, but the governing tests and limits differ by forum. This article organizes the comparison around three…
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Missed the Provisional Patent Deadline? Options for Filing a PCT Application
Missing the twelve-month priority deadline after filing a U.S. provisional application does not necessarily foreclose international patent protection. A PCT application filed within the following two months may retain the provisional’s priority through a…
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When Your Own Patent Application Becomes Prior Art: U.S. common ownership, Japanese applicant identity, and Korean expanded novelty—a guide in both directions
An earlier patent application within a corporate portfolio can threaten a later application, but the available protection depends on which jurisdiction’s rules apply. This article uses 35 U.S.C. § 102(b)(2)(C) to explain Japan’s Article 29bis and South…
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Reviving Patent Rights at the USPTO: Unintentional Delay, the Three-Month Threshold, and Practical Limits
Reviving patent rights before the USPTO requires counsel to identify the precise procedural defect, establish that the entire relevant delay was unintentional, and submit a complete, grantable petition. This article explains how to reconstruct the chronology,…
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DAS Codes Explained: A Practical Guide to U.S., PCT, and Chinese Patent Practice
This article provides a practical guide to using the World Intellectual Property Organization’s Digital Access Service (“WIPO DAS”) to exchange patent priority documents in U.S., PCT, and Chinese practice. Although DAS can eliminate repeated submission of…
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Context Is Paramount: Ex parte Chowdhury and the Proper Use of Markush Groups
Ex parte Chowdhury confirms that whether alternatives form a proper Markush group depends on their technical unity in the context of the claimed invention, rather than on whether they are identical in every structural or functional respect. Context determines…
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When Information Does Technical Work: Comparing the U.S. Printed Matter Doctrine with the EPO’s Presentation-of-Information Framework
This article compares the U.S. printed matter doctrine with the European Patent Office’s presentation-of-information and COMVIK frameworks, explaining that the systems overlap when semantic information is attached to otherwise known technology but are not…
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When "One or More Processors" Still Requires One: Functional Allocation After Salazar and Finjan
Patent claims frequently recite “one or more processors configured to” perform multiple functions, but that language does not necessarily permit several processors to divide those functions among themselves. Federal Circuit decisions including Convolve,…
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One Claim, Many Paths: Multiple Dependent Claims in the United States, Europe, China, Korea, and Japan
A multiple dependent claim can compress several claim combinations into one numbered claim. That economy is attractive in offices that charge by numbered claim, but it is less attractive in the United States, where fee calculations expand the claim into its…
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Who Owns the University Invention? Inventorship and Patent Ownership Across Academic Roles
University inventions require two distinct but coordinated inquiries: inventorship follows the patent claims, while ownership follows the chain of title. The same federal inventorship standard applies to undergraduates, graduate students, postdoctoral…
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Madrid for Patent Attorneys: The PCT Analogy, the Paris Priority Trap, and Why Madrid Is Not PPH
The Madrid Protocol is best understood not as a worldwide trademark or a full trademark analogue to the Patent Cooperation Treaty (“PCT”), but as a centralized filing and portfolio-administration mechanism that delivers requests for protection to designated…
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The Applicant Is Not Necessarily the Owner: Filing U.S. Patent Applications for Employee Inventions
This article explains why, for employee inventions, naming the employer as the applicant under 35 U.S.C. § 118 and Rule 1.46 generally provides greater continuity and corporate control than naming the employee-inventor, particularly if the employee later…
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Not on the Cover, Still Before the Office: Parent-Application Prior Art and § 325(d)
This article examines whether prior art cited or considered during prosecution of a parent application may support discretionary denial under 35 U.S.C. § 325(d), even when the reference does not appear on the face of the challenged patent. It explains that…
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One Specification, Six Inventions: Continuation and Divisional Practice in the United States and China
This article explains how a single patent specification disclosing inventions A through F should be divided into later applications under U.S. and Chinese practice. In the United States, restricted inventions B and C should ordinarily be pursued in timely…
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From PCT Search to U.S. Fast Track: Using the Patent Prosecution Highway in a Section 371 National Stage
A U.S. national-stage application under 35 U.S.C. § 371 may qualify for accelerated examination through the Patent Prosecution Highway, but an international search report citing only “A” references does not itself establish eligibility. The applicant must…
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Do Not Give the Requester a Second Brief: Why Patent Owners Should Usually Waive the Post-Order Statement When Ex Parte Reexamination Runs Alongside Litigation
This article argues that a patent owner facing a third-party-requested ex parte reexamination alongside infringement litigation should ordinarily waive the optional post-order statement authorized by 35 U.S.C. § 304. Filing before the first Office action…
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Claiming the Destination: When a Desired Effect Receives Patentable Weight
Patent claims frequently state not only what an invention is or does, but what it is intended to accomplish: reducing latency, improving stability, treating disease, preventing movement, or achieving a specified performance level. Whether that language…
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Behind the File Wrapper: Discoverability of Patent-Prosecution Materials: Privilege, Work Product, Patent Agents, Foreign Associates, and Internal Counsel Communications
Patent-prosecution files are neither categorically privileged nor automatically subject to production; each document requires a forum-specific analysis of its purpose, participants, confidentiality, and relationship to anticipated litigation. Attorney-client…
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Same Twelve Months, Different Clock: Translating Patent Grace Periods Between the United States and Japan
The United States and Japan each offer a one-year route around certain patent-defeating disclosures. That shared duration is useful—and dangerously incomplete. The U.S. rule asks whether a disclosure falls within a source- and subject-matter-based exception…
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From Abstract Idea to Technical Solution
Artificial-intelligence inventions are patentable in both the United States and China, but neither jurisdiction protects “AI” as an abstract label or rewards generic use of a known model in a new field. U.S. practice applies the Alice/Mayo eligibility…
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From Rule 132 Declarations to Korean Experimental Evidence: A Two-Way Guide for U.S. and Korean Patent Prosecutors
This article compares U.S. 37 C.F.R. § 1.132 declaration practice with the closest Korean analogue: a KIPO written argument supported by experimental results, comparative data, expert explanation, or other technical evidence. It explains that both systems use…
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Who Is an Inventor—and of What?: Claims, Disclosure, and Inventorship in the United States, Europe, South Korea, China, and Japan
This article examines how the meaning of “inventor” differs across the United States, Europe, South Korea, China, and Japan, focusing on whether inventorship is determined by the inventions claimed or by everything described in the application. It…
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From Festo to File History: Comparing U.S. Prosecution History Estoppel with EPO, Korean, Japanese, and Chinese Constraints on Claim Scope
This article compares how prosecution history can limit patent claim scope in the United States, the EPO, Korea, Japan, and China. In the United States, prosecution history operates through several related doctrines: ordinary claim construction, prosecution…
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Fast Track, Different Gate: Teaching USPTO Track One and CNIPA Prioritized Examination Across U.S. and Chinese Patent Practice
USPTO Track One and CNIPA prioritized examination both accelerate patent prosecution, but they operate through fundamentally different gatekeeping models. USPTO Track One is a technology-agnostic, fee-based procedural option: if the applicant files a…
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Search First, Draft Deliberately: How a Reference-Specific Background Can Support Patent Eligibility and Preserve Claim Meaning
A deliberate prefiling prior-art search can serve as a specification-design tool, not merely a patentability screen. By identifying “framing references,” accurately describing their architectures and limitations, and tying each distinction to a claimed…
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Bayh–Dole Across Borders: Government-funded inventions in the United States, EU/Horizon Europe, Germany, Japan, China, and South Korea—organized by coverage, allocation, and continuing public constraints
Bayh–Dole is best understood not as an automatic university-ownership rule, but as a conditional government–contractor bargain that permits a contractor to retain title to qualifying federally funded inventions while preserving disclosure and patenting…
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From Argument to Evidence: The Importance of Expert Declarations in Responding to a Non-Final Office Action in Ex Parte Reexamination
In ex parte reexamination, a patent owner’s response to a non-final Office Action is often a critical opportunity to build the factual record, particularly when the rejection depends on technical assumptions about prior-art references, claim mappings, system…
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From Korean “Technical Ideas” to U.S. “Practical Applications”: § 101 Strategy for Software and AI Patent Applications
The article explains why Korean software and AI patent applications that appear eligible under Korean law may still face significant obstacles under U.S. patent-eligibility doctrine. Korean law focuses on whether the claimed invention is a “technical idea…
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Claiming for Division: Why Patent Prosecutors Should Sometimes Draft Patent Claims to Invite Restriction
This article argues that patent prosecutors should sometimes treat a restriction requirement as a commercial tool rather than a prosecution inconvenience. For platform technologies—such as a life-sciences program with claims to a compound, formulation,…
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Small Entity Status Does Not Travel: Patent-Fee Relief at the EPO, JPO, Korean MOIP, and CNIPA
“Small entity” and “micro entity” are not portable characteristics of a patent applicant. They are classifications created by U.S. law for particular applications and patents before the U.S. Patent and Trademark Office (“USPTO”). A company that pays…
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Beyond the Right to Exclude: Why Large Companies Obtain Patents They May Never Assert
Large companies obtain patents not only to exclude competitors, but also to influence commercial decisions long before litigation occurs. A strategically constructed portfolio can deter operating competitors through a form of mutually assured destruction,…
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One Design, Two Regimes: U.S. and EU Design Protection After LKQ
This article compares U.S. design-patent law after LKQ Corp. v. GM Global Technology Operations LLC with the European Union’s unitary design regime, highlighting the different perspectives of the U.S. “ordinary designer” and the EU “informed user.” Although…
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Written for the Skilled Artisan, Read by Everyone: Drafting Patent Applications for Multiple Audiences
A patent application is legally evaluated through the lens of a person of ordinary skill in the art, but its practical success depends on a much broader audience: patent examiners, continuation counsel, foreign associates and national-phase examiners, judges,…
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Patent Prosecution Appeals in Translation: Comparing USPTO PTAB Appeals and JPO Appeals Against Examiner Refusals
This article compares the USPTO ex parte appeal process before the PTAB with the JPO appeal against an examiner’s decision of refusal, using each system as a teaching framework for practitioners trained in the other. Its central point is that the two systems…
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Mis-Mapping, Not Mini-Trial: A Case Study in the USPTO’s New Pre-Order Paper Procedure
The USPTO’s new pre-order paper procedure gives patent owners a narrow but potentially consequential opportunity to challenge an ex parte reexamination request before the Office orders reexamination, but the article emphasizes that this opportunity must be…
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The Examiner Is Not Opposing Counsel: Patent Prosecution as Mediative Advocacy
This article argues that examiner-level patent prosecution is better understood as a form of mediative advocacy than as the adversarial process for which lawyers are traditionally trained. Unlike litigation, prosecution involves no opposing claimant, the…
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Keeping the Family Open: U.S. Continuation Practice Compared with Europe, China, Korea, and Japan
U.S. continuation practice is a uniquely powerful portfolio-management tool because it allows applicants to keep a patent family pending and pursue additional same-disclosure claim sets as markets, competitors, prior art, licensing needs, and litigation…
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Secret Prior Art in the USPTO and EPO: Earlier-Filed, Later-Published Patent Applications in Comparative Perspective
This article compares how the USPTO and EPO treat “secret prior art”—earlier-filed patent applications that were not public when a later application was filed but later acquire prior-art effect after publication. In the United States, AIA § 102(a)(2) treats…
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The Territorial Trap: Foreign Filing Restrictions for U.S. and China-Origin Inventions
For inventions developed in or across the United States and China, the first patent filing decision should begin with a territorial invention-location analysis, not with inventor nationality, corporate headquarters, or preferred filing venue. The United…
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The Global Examiner Interview: Communication, Commitment, and File-History Risk Across the USPTO, EPO, JPO, Korean, and Chinese Patent Offices
Examiner interviews are a valuable prosecution tool, but their strategic significance varies sharply by jurisdiction. The central question is not simply whether an examiner will communicate with the applicant, but whether that communication carries procedural…
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Same Office Action, Different Stakes: Responding to USPTO Office Actions in Ex Parte Reexamination and Ordinary Patent Prosecution
This article explains why responding to an Office Action in ex parte reexamination requires a different strategy than responding during ordinary patent prosecution. In ordinary prosecution, the applicant is generally trying to obtain commercially useful claim…
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SMEDs After the USPTO’s 2026 Guidance: Rule 132 Declarations, Corroboration, and the Need for a Court-Ready § 101 Record
This article argues that Subject Matter Eligibility Declarations (“SMEDs”) can be valuable prosecution tools for building a factual record in response to § 101 rejections, but only if they are used with discipline. A SMED should not ask an inventor or expert…
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Patent-Term Relief in Korea and the United States: Distinguishing Patent-Office Delay from Regulatory Delay
This article explains that patent-term relief in Korea and the United States should be analyzed by the legal source of the lost time, not by the shared shorthand of “extension.” In the United States, patent term adjustment compensates for patent-office delay…
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Cross-Field Prior Art and Hindsight: U.S. Analogous-Art Doctrine and the EPO Problem-Solution Approach
This article compares U.S. analogous-art doctrine with the EPO problem-solution approach through Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., where the Federal Circuit rejected an obviousness challenge because the petitioner linked a…
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Lean Patent Operations: Jidoka, Automation, and AI in Patent-Prosecution Workflows
Patent prosecution is legal knowledge work, but it is also repeatable process work: new application filings, formalities, assignments, IDS submissions, Office communication processing, allowance, issuance, maintenance fees, foreign filing, and portfolio…
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The Three-Month Date Is a Backstop, Not a Filing Target
The Office action arrives, and the unextended response date is entered. Substantive work, however, is scheduled backward from that date. By the time a proposed amendment reaches the inventor, the examiner has limited interview availability, foreign counsel…
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Candor Without Capitulation: The Philosophical Case for Filing an Information Disclosure Statement
Every patent prosecutor has heard some version of the same question: Why should an applicant disclose a reference that might be used to reject the application?
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Choosing Between a § 371 National Stage and a Bypass Continuation in U.S. PCT Practice
A PCT application designating the United States gives applicants a choice that does not exist in the same way in many other jurisdictions: enter the U.S. national stage under 35 U.S.C. § 371, or file a domestic U.S. application under 35 U.S.C. § 111(a)…
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Claim Scope and Disclosure in U.S. and Chinese Patent Law: Written Description, Support, Sufficient Disclosure, and the Forum-Specific Nature of Review
The easiest comparative mistake is to say that U.S. “written description” and Chinese “support by the description” are the same doctrine under different names. They are not. They respond to a similar overclaiming problem, but they operate through different…
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Reframing Patent Eligibility: U.S. § 101 Case Law Through the Lens of Japanese Technicality Doctrine
The recent Federal Circuit cases on patent eligibility do not simply show that U.S. law has become hostile to particular technologies. They show something more specific and more institutional: the United States often asks threshold eligibility doctrine to…
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Cross-Agency Candor: Managing FDA-USPTO Consistency to Avoid Inequitable Conduct and Regulatory Exposure
Consider a familiar device-company scenario. A regulatory team prepares a 510(k) and tells FDA that a design feature tracks a predicate device, is supported by familiar engineering literature, and does not raise new questions of safety or effectiveness.…
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Restriction Requirements as Substantive Limiters: Lessons from Focus Products v. Kartri
Restriction requirements are often treated as administrative noise—something to get past on the way to allowance. The Federal 2025 decision in Focus Products Group International, LLC v. Kartri Sales Co. shows how dangerous that mindset can be. In that case, a…
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