New USPTO Guidance on Obviousness
Earlier this week, the US Patent & Trademark Office (USPTO) released new guidance, instructing patent examiners how to determine whether an invention is obvious (and therefore unpatentable) in view of prior art.
The USPTO’s new guidance reminds examiners to be “flexible” (read: expansive) in determining which prior art references can be combined in an obviousness rejection. Basically, this gives examiners greater latitude in combining prior art from unrelated fields of technology when they reject a patent application.
As a practical matter, for patent applicants responding to these types of rejections, this reinforces the existing best practices. Avoid arguments about “non-analogous art” and “no motivation to combine”. Instead, focus your arguments on what’s missing from the combination of references and related deficiencies in the examiner’s reasoning.
For a more detailed summary and analysis of the USPTO’s new guidance, Dennis Crouch’s Patently-O blog has a solid post here.
Welcome Bryan Candelario!
I’m excited to officially welcome Senior Patent Attorney Bryan Candelario to the firm! Bryan hit the ground running, and he’s already added a lot of value for several of our clients.
Bryan brings with him a decade of experience and a passion for developing high-quality patent portfolios. In addition to drafting and prosecuting patents for his clients, he has experience analyzing patent assets for a variety of purposes including licensing, portfolio acquisition, pre-litigation, and M&A.
Bryan began his career as a design engineer developing high-reliability electronics before attending law school. After earning his JD from the University of Texas School of Law, he chose a career in patent law to maintain a connection to technological innovation and work in the crossroads between technology, the law, and business strategy. Now that he’s started at the firm, he’s particularly excited about collaborating with our talented team and working with innovative companies to deliver high-quality and high-impact work
Outside of the office, Bryan enjoys spending time with his wife, Jessica and his four children. He also spends his spare time traveling, cooking, and bicycling.
When Can Prior Art Invalidate an Issued Patent?
If you’re working at a tech company, you’ve probably seen patents filed by your competitors and thought – that technology’s been around for years, how in the world did they patent that? In legal terms, the question often translates to – Can we invalidate this patent based on the prior art?“
We get these types of questions all the time. Of course, the same question is just as relevant to the company that owns the patent. A patent is a significant investment, and no one wants to waste resources getting a patent that can’t be enforced because it’s invalid.
We explore the answers to these questions in a new blog post that takes a detailed look at when an issued patent can be invalidated by prior art.
What’s the Difference Between a Patent and a Trade Secret?
To succeed in a competitive landscape, tech companies have to understand their options for protecting intellectual property (IP). It’s an important concern to keep in mind: You can reduce the risk that your competitors will steal or copy a valuable invention by making well-informed decisions about what legal protections to pursue.
In this recent blog, we outline the four main types of IP protection relevant to high-tech industries and take a deep dive into patents versus trade secrets.
Marine and Hydrokinetic Energy: An Overview of the Patent Landscape
Marine and Hydrokinetic (MHK) energy currently comprises about 60% of renewable electricity worldwide, making it the largest source of renewable energy. But while some experts believe that as much as half of the economically viable potential of MHK energy has not yet been realized, the field’s growth has been slowing down.
Investing in MHK technology is not without risk, but there’s certainly a high potential for reward as well. In the latest blog in our alternative energy patent series, we review the current state of the industry to identify where the strongest research and development opportunities might lie, and how that may inform your business’s intellectual property strategy.
Michael K. Henry, Ph.D.
Michael K. Henry, Ph.D., is a principal and the firm’s founding member. He specializes in creating comprehensive, growth-oriented IP strategies for early-stage tech companies.