Is It Really That Obvious? A Tale of Two Decisions

By William Gvoth & Paul Gurzo

April 9, 2017- On January 3, 2017 the Court of Appeals for the Federal Circuit (the court) handed down two decisions relating to obviousness under § 103 – In re: Marcel Van Os, Freddy Allen Anzures, Scott Forstall, Greg Christie, Imran Chaudhri, No. 2015-1975 (Fed. Cir. 2017) (Van Os) and In re: Ethicon, Inc., No. 2015-1696 (Fed. Cir. 2017) (Ethicon).  This article will tell the tale of these two decisions as well as highlight some of the questions that these decisions raise.

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Analysis of December 2016 USPTO Subject Matter Eligibility Examples

By Kris Rhu & Paul Gurzo

March 20, 2017- On December 15, 2016, the USPTO published three subject matter eligibility examples focusing on business method claims, which can be found here.  The purpose of these examples is to give guidance on how claims should be analyzed using the 2014 Interim Guidance on Subject Matter Eligibility, recent Supreme Court and Federal Circuit decisions, and recent Memorandums published by the USPTO.  These examples seem to indicate that the power of §101 to restrict patentability has been whittled down since Alice and that the USPTO would like to reduce the number of §101 rejections for technological claims in light of court decisions post-Alice.  Below, we describe each example provided by the USPTO, explain the USPTO guidance for each example, and provide practical practice tips that practitioners can use to help reduce or overcome §101 rejections.

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Top Patent Firms for 2016

By Paul Harrity & Anna Yee (Originally published by IP Watchdog)

We compiled a list of the top patent firms that are ranked based on the total number of U.S. utility patents that issued in 2016 where the patent firms were listed on the front of the utility patents. We have included only patent firms that have obtained at least 50 utility patents. We made an attempt to correct for typographical errors. We did not eliminate company legal departments from the list.

For the list from last year see: Top Patent Firms for 2015.

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Alice on Dulany Street: How the PTAB Handles 101 in Ex Parte Appeals

By Eli Mazour & James Bennin

February 15, 2017- “The outlook has become only more grim for appellants who are hoping that the PTAB will overturn a § 101 rejection.”

Alice in WonderlandPreviously, we analyzed ex parte appeal decisions by the Patent Trial and Appeal Board (PTAB) from the year following the Alice v. CLS Bank decision. At the time, we concluded that the PTAB is unlikely to reverse § 101 rejections based on Alice. We decided to revisit this conclusion based on ex parte appeal decisions from December 2016.

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Paul Gurzo Conducts Webinar: “How to Develop Cost Effective & Winning Prosecution Strategies”

May 13, 2016 – Paul Gurzo, Harrity & Harrity Partner, was part of a panel of speakers that discussed how to develop cost effective and winning preparation and prosecution strategies.

Paul frequently speaks on different areas of patent practice, with a focus on strategically preparing and prosecuting applications, and ways companies can maximize the value of their portfolios.

For over 10 years, The Knowledge Group has produced thousands of best in class educational webcasts for a variety of industries and professions including legal, tax, accounting, finance, human resources, risk/compliance, and many others.

Click HERE to order recording of the webinar.