Category: patent prosecution

Arguing Definitions in Patent Prosecution

Claim terms are given a broadest reasonable interpretation (BRI) consistent with the specification, ideally.  Occasionally, a USPTO examiner interprets a claim term in a manner different from what the applicant in a patent application intended, in order to make a rejection of the claims during patent prosecution.  Available […]

Logic, Arguments and Patents

Patent prosecution involves one side arguing for, and another side arguing against, the validity of claims in a patent application.  This takes the form of a written discourse, in which an Examiner for the USPTO (United States Patent and Trademark Office) generally argues (in an Office action) the […]

Opportunity for Equivalents in Claim Amendments

It is commonly held that the doctrine of equivalents is lost when claim amendments are made during patent prosecution.  That is, any claim amendment that is made during patent prosecution surrenders or gives up elements which are equivalent to those elements claimed in the amendment.  Surrender of the […]

Plain Language

“Helping Jurors Understand the Law,”* written by Maureen Murphy (who works at our firm’s Washington DC office) has insights about legal writing that I’d like to share with you.  Although her topic is jury instructions, its ideas also apply to the writing style and content in patent applications […]

Patent Practitioners and Writing

Patent practitioners are prolific writers.  Consider that we write patent applications and responses to Office actions all day long, pretty much every day.  Each of these documents is reviewed, revised and (based upon client instruction) sent to the United States Patent and Trademark Office.  Often, each of these […]