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Prosecution Tips & Tricks



  • Jun 29 2010

    USPTO Post-Bilski Examiner Guidance

    The attached is guidance given to the Examiner's on June 28, 2010 following the Supreme Court Bilski v. Kappos decision.

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  • Nov 03 2009

    Pesky Patents – The Most Litigated Patents of 2008

    This is the slide deck from a presentation I gave on October 29, 2009 regarding the patents that are actively being asserted by Picture Patents and Papst Licensing.  This presentation was the third is a series of presentation about the most frequently litigate patents of 2008.  There are three more presentations in this series and can be viewed over the Internet through a webinar.  If you are interested in this series of presentations and would like an invitation to the next webinar, please contact Jim Hallenbeck at or 612/373-6938.

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  • Aug 03 2009

    Blackboard, Inc. v. Desire2Learn, Inc. (Fed. Cir. 2009)

    See the Notes tab for some brief insight on this opinion.

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  • Jun 26 2009

    Non-Patent Literature Prior Art Searching

    Often times, when prior art searching for non-patent literature, you work at the mercy of your favorite search engine.  However, you are likely missing a lot in your search and you are presented with redundant links to sites that fail to provide the information you are seeking.  HarvestIP is attempting to fill this gap in non-patent literature prior art searching.  The attached document is a presention by HarvestIP about their capabilities and offerings.

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  • Jun 24 2009

    Foreign Filing - Managing Cost

    Managing costs associated with foreign filing of patent applications is an important service practitioners must provide to clients.  With the costs of filing, prosecuting, and maintaining protection in multiple foreign jurisdictions being quite high, one place to help manage costs is in translation of applications.  Joe Karcinell of Park IP Translations provided the attached article for consideration.

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  • May 07 2009

    BMC Resources v. Paymentech, 498 F.3d 1373 (Fed. Cir. 2007)

    This opinion deals with the issue of joint infringement and provides an explicit lesson on claim drafting.

    “The concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting. A patentee can usually structure a claim to capture infringement by a single party. See Mark A. Lemley et al., Divided Infringement Claims, 33 AIPLA Q.J. 255, 272-75 (2005). In this case, for example, BMC could have drafted its claims to focus on one entity. The steps of the claim might have featured references to a single party’s supplying or receiving each element of the claimed process. However, BMC chose instead to have four different parties perform different acts within one claim. BMC correctly notes the difficulty of proving infringement of this claim format. Nonetheless, this court will not unilaterally restructure the claim or the standards for joint infringement to remedy these ill-conceived claims. See Sage Prods. Inc. v. Devon Indus. Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997) (“[A]s between the patentee who had a clear opportunity to negotiate broader claims but did not do so, and the public at large, it is the patentee who must bear the cost of its failure to seek protection for this foreseeable alteration of its claimed structure.”)”

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  • Apr 29 2009

    Korea Update: Overview of the Revision to the Korean Patent Act and Utility Model

    On January 8, 2009, the Korean National Assembly passed a revision to the Korean Patent Act and Utility Model Act.  The revisions will take effect on July 1, 2009.  An overview of these changes is included in this newsletter from Lee International IP & Law Group of Seoul, Korea.  (  Other topics are covered in this newsletter as well.

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  • Apr 08 2009

    Appeal Flow Chart

    The attached appeal flow chart is useful to visualize the appeal process before the Board of Patent Appeal and Interferences at the USPTO.  This flow chart is also usefule identify your options and the relevant rules and statutes to consider.

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