Listen to audio editions of Divergent Patent Law articles, with the written analysis and cited authorities close at hand.
71 articles in the library
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…
Listen on SpotifyMaking 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,…
Listen on SpotifyU.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…
Listen on SpotifyDeclarations 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…
Listen on SpotifyPaying 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…
Listen on SpotifyPCT 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…
Listen on SpotifyThe 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…
Listen on SpotifyA missing confirmation number can complicate the transfer of an unpublished patent application even when the client has provided a properly executed power of attorney.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…
Listen on SpotifyThe 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…
Listen on SpotifyThe 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…
Listen on SpotifyThe 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…
Listen on SpotifyReturning 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…
Listen on SpotifyThe 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…
Listen on SpotifyChapter 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…
Listen on SpotifySection 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…
Listen on SpotifyEffective 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…
Listen on SpotifyThis 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.…
Listen on SpotifyThe 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…
Listen on SpotifyA 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…
Listen on SpotifyPatent 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…
Listen on SpotifyMissing 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…
Listen on SpotifyAn 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…
Listen on SpotifyReviving 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,…
Listen on SpotifyThis 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…
Listen on SpotifyEx 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…
Listen on SpotifyThis 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…
Listen on SpotifyPatent 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,…
Listen on SpotifyA 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…
Listen on SpotifyUniversity 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…
Listen on SpotifyThe 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…
Listen on SpotifyThis 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…
Listen on SpotifyThis 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…
Listen on SpotifyThis 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…
Listen on SpotifyA 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…
Listen on SpotifyThis 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…
Listen on SpotifyPatent 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…
Listen on SpotifyPatent-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…
Listen on SpotifyThe 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…
Listen on SpotifyArtificial-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…
Listen on SpotifyThis 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…
Listen on SpotifyThis 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…
Listen on SpotifyThis 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…
Listen on SpotifyUSPTO 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…
Listen on SpotifyA 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…
Listen on SpotifyBayh–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…
Listen on SpotifyIn 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…
Listen on SpotifyThe 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…
Listen on SpotifyThis 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,…
Listen on Spotify“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…
Listen on SpotifyLarge 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,…
Listen on SpotifyThis 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…
Listen on SpotifyA 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,…
Listen on SpotifyThis 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…
Listen on SpotifyThe 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…
Listen on SpotifyThis 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…
Listen on SpotifyU.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…
Listen on SpotifyThis 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…
Listen on SpotifyFor 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…
Listen on SpotifyExaminer 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…
Listen on SpotifyThis 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…
Listen on SpotifyThis 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…
Listen on SpotifyThis 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…
Listen on SpotifyThis 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…
Listen on SpotifyPatent 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…
Listen on SpotifyThe 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…
Listen on SpotifyEvery 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?
Listen on SpotifyA 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)…
Listen on SpotifyThe 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…
Listen on SpotifyThe 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…
Listen on SpotifyConsider 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.…
Listen on SpotifyRestriction 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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Practical patent analysis for in-house counsel and foreign associates managing U.S. and international portfolios. Choose an episode, then explore the written article for authorities and detail.
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An invention that meets Korean eligibility requirements may still face U.S. Section 101 objections. This episode compares the two frameworks and explains why identifying a concrete technological improvement matters when preparing U.S. software and AI claims. Useful for foreign associates coordinating U.S. filings and counsel managing cross-border portfolios.
Listen on Spotify ↗Read the Full Article →Restriction can shape a patent family's filing strategy. This episode examines when claims directed to genuinely distinct inventions can help identify divisional opportunities, how disclosure support constrains those choices, and why the resulting claim boundaries matter. Useful for counsel planning protection across a developing technology platform.
Listen on Spotify ↗Read the Full Article →Examination often advances through careful problem solving with the examiner. This episode explains how to identify the concern behind a rejection, test it against the claims and prior art, and develop supported alternatives that serve commercial objectives. Useful for prosecution teams preparing responses and examiner interviews.
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