Christopher Huebner

The U.S. needs strong patent laws and patent protection for the innovative software systems that are the key to the U.S. economy. #patent #provisionalpatent #innovation #invention

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This year's notable patent decisions from the Federal Circuit provided clearer guidelines on double patenting and opened the door for new ways to invalidate design patents. Here's a look at the cases that will shape patent litigation going forward. https://lnkd.in/eDsCjn6B

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My colleagues Jeff Young & Jon Bockman shared key takeaways on the recently released guidance from the USPTO on patenting AI inventions. Read more at the link below!

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When will the PTO learn? Examiner comments about the virtual Patent Examiner Training Academy: "Poorly, it simply operates poorly. It is churning out the worst prepared examiners I've seen. I think it is partially because working from home and getting 3 day weekends from the jump doesn't impart urgency and it is easier to not pay attention on video calls then it is if you are physically in a room with people. Retention is very low in my TC for these examiners. It took people in my cohort 12 hour days 6 days a week once we got our office to make production. We had to deal face to face with grumpy primaries. Now, probies are offline Friday -Sunday. They don't answer the phone when you call them and they are not prepared for search help meetings. Dealing with grumpy primaries face to face meant you walked into their office on time with a stack of marked references you already read. Now, it's like they can't handle anything but texts with simley (sic) faces." "Agreed. The "sink or swim" model that is currently used is about 50% effective at retention, and I'm not convinced those we're keeping are the best, simply the ones able to survive the hazing. Throwing tons of information as disembodied concepts at fresh college grads, giving them thoroughly sanitized examples, then expecting them to examine real cases all of a sudden? A much better model would be a one-on-one mentoring model, with periodic large group training mixed in. But that would probably be more expensive initially. Maybe the Office really has considered other options and determined that the current model is the best, even if it isn't very good. Who knows."

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The U.S. Court of Appeals for the Federal Circuit issued its opinion on 𝘓𝘒𝘘 𝘊𝘰𝘳𝘱. 𝘷. 𝘎𝘔 𝘎𝘭𝘰𝘣𝘢𝘭 𝘛𝘦𝘤𝘩𝘯𝘰𝘭𝘰𝘨𝘺 𝘖𝘱𝘦𝘳𝘢𝘵𝘪𝘰𝘯𝘴, 𝘓𝘓𝘊, 𝘊𝘢𝘴𝘦 𝘕𝘰. 21-2348, offering a more flexible threshold for obviousness in design patents. To learn more on how this updated threshold could potentially impact the application process and qualifications for design patents, visit our article below. #PatentLaw #IntellectualProperty #PatentAct

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The Federal Circuit has adopted the Graham test for #design #patents, aligning it more closely with the process for utility patents, meaning we could see an increase in obviousness rejections and invalidity arguments. Dive into the details with insights from #HaynesBoone #IntellectualProperty Partners Vera Suarez and Alan Herda at the link in the comments.

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The test for design patent claim obviousness changed. The en banc Fed. Cir. struck down the existing test and adopted a more "flexible" approach to conform to KSR. Now, obtaining a design patent will be more difficult, and invalidating an existing design claim will be easier. The Supreme Court has been happy to set the Fed. Cir. straight in recent history. I expect a petition for Cert. Will it be granted? "We conclude that the Rosen-Durling test requirements—that (1) the primary reference be “basically the same” as the challenged design claim; and (2) any secondary references be “so related” to the primary reference that features in one would suggest application of those features to the other—are improperly rigid. The statutory rubric along with Supreme Court precedent including Whitman Saddle, Graham, and KSR, all suggest a more flexible approach than the Rosen-Durling test when determining obviousness." Any analogous art can now be applied under the now standard KSR/Graham test. https://lnkd.in/ePs47bZD #patents #designs

The issues of patent-term-adjustment, terminal disclaimers, and obviousness-type double patenting continue to be part of the policymaking debate. A new Patently-O post that I wrote looks again at the Cellect petition before the Supreme Court, questioning whether the judge-made ODP properly takes precedence over the statutory requirement of PTA. The case also raises a question of whether the Federal Circuit has gone astray with its ODP analysis by failing to consider the equities of the situation. Although the doctrine has origins in equity, the Federal Circuit applies the doctrine as if it were a rule of law. My post focuses on the New York Intellectual Property Law Association (NYIPLA) amicus brief filed by Jeffrey I. D. Lewis and his Foley Hoag LLP team. https://lnkd.in/gx3fZ4qT While many have argued for weakening the ODP doctrine because of the change in patent term, the Patent Office has separately indicated its plan to expand the doctrine by requiring more extensive waivers by patentees within their terminal disclaimers. In particular, the new rule would require the patentee to agree that the terminally disclaimed patent will be unenforceable if any claim of any related patent is found to be anticipated or obvious. The USPTO is currently seeking comments on this proposed rule. https://lnkd.in/gVQfbmyZ

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Patents in the news! More guidance on AI subject matter from USPTO - but more to come!

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If youfor have an idea for a patent visit us at menloparkpatents.com to see how our reasonably priced fixed fee services by USPTO licensed team members can help you. If you need a trademark visit wizardip.com to see how our US Licensed attorneys can help you with our fixed fee services. WizarIP also has low cost professionally filed design patents. #patent #provisionalpatent #invention #innovation

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If you run into functional claiming issues in your mechanical and electrical patents the join Theresa Stadheim and myself on a Strafford webinar discussing 35 USC 112(f) issues #patentlaw

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If you are a patent practitioner you realy need to join NAPP. Attorney Hobbs is a great example of the professionalism and knowledge of our members and the NAPP forum connects you to that knowledge base. #patents #patentagent #patentattorney

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Long before the AIA created the Patent Trial and Appeal Board, the patentability of one or more claims could be reviewed via Ex Parte Reexamination at any time during the enforceability of that patent. But is Reexamination REALLY a re-examination? 🔍 Read Jessica J. Harrison, BSECE, MSECE, JD and Jason Eisenberg’s recent article, “What’s in a Name? Why Reexamination Is Not a Re-Examination,” to learn more in a new series of IP practice tips. https://lnkd.in/eVh9ZSnt #USPTO #Reexam #Patents

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