Practical Tips for Patent Drafting

Why patents in September are a bad thing

The USPTO issues more Office Actions in September than any other month. Why is that? The chart above shows the USPTO pendency of First Actions over the last two years. Notice that there is a huge difference in September for the last two years. What is this effect? Patent Examiners have production goals and bonuses.…

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Non-transitory storage media

If you have a patent claim with the term “non-transitory storage media” – you should find another patent attorney. The history of the “non-transitory storage media” claims. Who can you sue with a “non-transitory storage media” claim? Problems with the “non-transitory storage media” claims. What you can tell if your attorney uses “non-transitory storage media”…

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USPTO’s Track One vs Patent Prosecution Highway

Updated April 2020 Why the USPTO’s Track One is the mark of a lazy patent attorney. If your patent attorney is suggesting “Track One” to expedite your patent case – be wary. It is a trap. I would go so far as to say that Track One is the mark of a lazy patent attorney.…

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Investment Grade Patents Start with a Solid Foundation

An investment-grade patent starts with a solid foundation. Most patents are worthless, and getting a good patent is less about finding the gem as much as removing the dirt so that there are more possible gems in the portfolio. We do not know which patent will ultimately be gem, but we can dramatically increase our…

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How to Make Your Patent Strong Against Inter Partes Reexam

Strengthen your patent against Inter Partes Reexam One of the easiest ways for infringers to challenge an issued patent is through the Inter Partes Reexam process, commonly known as IPR. To successfully challenge a patent, someone has to produce a prior art document that would have changed the examiner’s mind. This is known as raising…

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Over-broad Patents Are No Longer A Good Thing

It used to be that “broad” patents were the best things for litigation. That is no longer the case. A patent drafting theory from 10 years ago was to draft a patent with the loosest language possible and go for claims that are nebulous. This drafting theory results in extremely broad descriptions of an invention…

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How to Review a Patent Application

How can you mess up reviewing a patent application? It’s a lot easier than you think. Some comments made by an inventor, even the most innocuous comments, can be misconstrued if a patent ever was litigated. Rather than create a messy trail of documented comments remember the most important rule: Good news by mail, bad…

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Patents that “Hide the Ball”

I had a telephone interview with a patent examiner the other week and in the course of the interview, the examiner said that he really liked my patent application because I did not try to hide the ball with the invention. I was originally taught to write patent applications by obfuscating the invention. Specifications are…

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BlueIron’s Patent Rating Checklist

A Patent Checklist to find out: How good is your invention? The spreadsheet contains many of the parameters discussed in BlueIron’s blog posts on patent due diligence.Please let us know if you have any suggestions/comments to make the checklist a better tool.

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Writing Your Own Patent

Writing your own patent? Do a business plan first. Some inventors write their own patent applications. This can be a very valuable exercise because forcing yourself to put the invention down on paper can help you better understand the invention, as well as think through new versions of the invention. In many cases, these pro…

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