Category Archives: Claim Construction

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3 criteria for @realDonaldTrump for new Director of Patent Office

US Capitol dome detail with flagThe President-Elect @realDonaldTrump and his transition team @transition2017 are working on appointments to his new Cabinet. One of the chairs is reserved for the new Secretary of Commerce. Following close on Commerce’s heels will be appointment of a new Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO … Continue Reading

How long should a patent claim be?

Hand Holding Wooden Folding  RulerHouse counsel for a large software company has written an open letter to me titled Pursuit of Extremely Short Patent Claims. He has thrown down the gauntlet in a public forum. Here’s what he said to me, followed by my response. … Continue Reading

How Young Turks Can Help Build Your IP Portfolio

37th Vodafone Istanbul Marathon 2015Are you protecting your company’s patents, trademarks, and other intellectual property (IP) internationally? If not, you’re missing out! The Young Turks of IP, literally in Turkey and figuratively elsewhere, can help you to advance your company’s business interests through better, stronger IP protection. Here’s what’s at stake, with 7 tips on how and when to protect your … Continue Reading

What everyone should know about Apple slide-to-unlock patent vs. Samsung

Slide To UnlockIn the last inning of the Apple-Samsung game of smartphone hardball, Samsung slid into home. Apple failed to make the tag. “Samsung is safe!” cried the umpires. The inning was umpired by the U.S. Court of Appeals for the Federal Circuit, which held Apple’s slide-to-unlock U.S. Patent 8,046,721 invalid. See Apple v. Samsung (Fed. Cir. Feb. 26, 2016). … Continue Reading

Patent — Picture or 1,000 Words?

Rich Beem, Johnny Kilpatrick & Patco ReelIn a patent, which is better: A picture or 1,000 words? For patent purposes, it’s important to provide considerable detail in drawings and descriptions. Some foresight is required, because support is required as of the filing date for the originally filed claims and for amendments that may become desirable during prosecution. In this article, we will consider … Continue Reading

More Words, Less Patent Clarity

Absolute ClarityThe Director of the U.S. Patent and Trademark Office has announced that in her zeal to prevent substandard patents from issuing, she will insist on clarity of the record. Every word of every patent will have to be defined. And every word stated in the patent process—in the give and take (or “prosecution”) between applicant… Continue Reading

Some Kind of Patent Trial

Beem Goes to CourtPatent jury trials reached their zenith in the mid-1990s. The stakes remain high, though the drama has faded. Now, even if it’s called a trial, what you get is “some kind of hearing,” as Judge Henry Friendly once called it in his seminal lecture and law review article. Some kind of hearing: That’s all you can expect in … Continue Reading

Why Samsung will pay half billion to Apple for design patent infringement

In a saga of epic proportions, sprawling across the globe, Apple and Samsung have been duking it out over smartphone design and features. That’s billion, with a “B” District Judge Lucy Koh of California entered judgment in favor of Apple to the tune of… Continue Reading

Beem Asks USPTO for Better Quality Patent Examination

The U.S. Patent and Trademark Office (USPTO) has proposed a new patent quality initiative. See Director’s Blog and Federal Register. In response, I have submitted a formal comment, Tracking Number 1jz-8ipa-7jnk, as set forth below. I contend that any discussion of quality patents should take into account the need for… Continue Reading

Fear of Patents Incited by Lobbyists

Patent law promotes the progress of technology by rewarding inventors who patent their inventions. From the beginning, the Constitution empowered Congress to pass a Patent Act, and President George Washington called for it in his first State of the Union address. Congress acted affirmatively in 1790, with periodic updates ever since. As Abraham Lincoln said, the patent system adds … Continue Reading

Patent System under Attack: Interview with USPTO Director Michelle Lee

This morning, my fellow leaders of the Chicago Intellectual Property Law Association (IPLAC) and I met with Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO), and several of her fellow USPTO executives, including the impressive Dr. Christal Sheppard, Director of the Detroit Office. Director Lee has excellent qualifications. Unfortunately, as discussed below, … Continue Reading

Build Your Patent Portfolio: Preparation, Prosecution, Appeals

USPTO Alexandria HeadquartersAre you General Counsel, Patent/IP Counsel, or an executive of a company that owns valuable proprietary technology? If your company or your client files patent applications, you’re probably encountering rejections. You may be wondering how to deal with the cases at hand and how to improve your strategy, procedures and execution for preparation and prosecution of patent applications. … Continue Reading

Inter Partes Review (IPR) of Patents

If you are asserting or defending against a patent, here are key points on “Inter Partes Review (IPR) of Patents” as presented to Chicago Bar Association. The Leahy-Smith America Invents Act of 2011 (AIA) created new post-grant patent invalidation procedures including Inter Partes Review (IPR) by the Patent Trial and Appeal Board (PTAB) in the U.S. Patent and Trademark … Continue Reading

Obtain Allowance of Software Patent under Alice and Guidelines

Last summer’s Supreme Court decision in Alice v. CLS Bank has had a dramatic effect on the patentability of business method and computer software inventions. In Alice, the Court declared that claims directed to abstract ideas must be analyzed under the framework for determining the patent subject matter it established in the Mayo  and Myriad cases. … Continue Reading

Teva v. Sandoz: Lessons for Patent Owners & Counsel

In Teva v. Sandoz, 574 U.S. __, No. 13-854 (slip op. Jan. 20, 2015), the Supreme Court held that “evidentiary underpinnings” such as expert testimony considered by a trial court in construing patent claims can be reversed on appeal only upon a showing of “clear error,” even while the intrinsic record and the ultimate legal … Continue Reading
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