Category: Federal Circuit

Patent System under Attack: Interview with USPTO Director Michelle Lee

This morning, my fellow leaders of the Chicago Intellectual Property Law Association (IPLAC) and I met with Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO), and several of her fellow USPTO executives, including the impressive Dr. Christal Sheppard, Director of the Detroit Office. Director Lee has excellent qualifications. Unfortunately, as discussed below, […]

Build Your Patent Portfolio: Preparation, Prosecution, Appeals

Are you General Counsel, Patent/IP Counsel, or an executive of a company that owns valuable proprietary technology? If your company or your client files patent applications, you’re probably encountering rejections. You may be wondering how to deal with the cases at hand and how to improve your strategy, procedures and execution for preparation and prosecution of patent applications. […]

Luck, Resources, Skill: In Basketball & Patent Cases

I write these words just hours before the Final Four—Kentucky, Duke, Michigan State, and Wisconsin—contend for the NCAA basketball title. Luck, resources, or skill: Which factor is most important in basketball? In patent cases? In basketball, one counts on a bit of luck as the ball rolls around the rim. Talented players are the key resources. For skill, just look at the […]

Inter Partes Review (IPR) of Patents

If you are asserting or defending against a patent, here are key points on “Inter Partes Review (IPR) of Patents” as presented to Chicago Bar Association. The Leahy-Smith America Invents Act of 2011 (AIA) created new post-grant patent invalidation procedures including Inter Partes Review (IPR) by the Patent Trial and Appeal Board (PTAB) in the U.S. Patent and Trademark […]

Obtain Allowance of Software Patent under Alice and Guidelines

Last summer’s Supreme Court decision in Alice v. CLS Bank has had a dramatic effect on the patentability of business method and computer software inventions. In Alice, the Court declared that claims directed to abstract ideas must be analyzed under the framework for determining the patent subject matter it established in the Mayo  and Myriad cases. […]

History and Future of U.S. Patent System

As I write these words, I am inspired and surrounded by original autographs of seven of America’s eight early presidents. Their signatures appear on 200-year old original patents displayed on the walls of my offices. See Beem Presidential Patent Collection. “If a country can be said to possess a soul, then America’s is the patent […]