Posts by Stephen B. Schott
John Oliver’s Anti-Patent-Troll Rant: Simple Thinking
Up is down and right is left when my inbox fills up with 10 friends linking me to something about patents. But this floppy-watches-hanging-from-trees moment came recently after comedian John Oliver, during his Last Week Tonight show, took on patent trolls. In doing so, he follows comedian Adam Corolla, who also had an anti-patent troll rant go viral…
Read MoreFor The Next Two Weeks, Google Is Buying Patents
Do you have a patent you want to sell? Want to sell it to one of the biggest companies in the world? You might have a partner in Google.How to Participate Through May 22, Google is buying patents through an experimental Patent Purchase Promotion. The transaction process is simple. Patent owners go to this site, fill out some…
Read MoreFour Boilerplate Responses For Responding To Subject Matter Rejections Based On The USPTO Hypotheticals
This is a summary of the sample argument sections of a longer article based on the USPTO’s subject matter-based hypotheticals.Hypothetical 1: Removing Malicious Code From EmailsWhen responding to a rejection at the USPTO, you might try a response along these lines. The current claim is similar to hypothetical 1 in the USPTO’s Abstract Ideas Hypotheticals published on January 27, 2015. In…
Read MoreThe USPTO’s Alice-Based Patentable Subject Matter Hypotheticals With Boilerplate Responses
The USPTO recently published hypotheticals to help guide applicants when defining patentable subject matter. Instead of just a case law review, the office provided claim drafting examples. While not legally binding, these provide a helpful roadmap for practitioners when addressing subject matter rejections. I’ve parsed the hypotheticals below and for each one, provided a sample argument that practitioners might…
Read MoreThe Federal Circuit Breathes More Life Into Claim Preambles
By Stephen B. SchottClaim preambles are given little weight in claim interpretation, which is seemingly incongruous with the amount of scrutiny courts give to all the other words in patent claims. But the Federal Circuit recently breathed just a little more life into preambles in Pacing Technologies, Inc. v. Garmin International, Inc.The decision focused on US patent 8,101,843 claim 25:…
Read MoreTowards More Reliable Trial Court Decisions On Claim Construction
By Stephen B. Schott The Federal Circuit, which has exclusive domain over patent-related appeals, overrules district court findings at an alarming rate. The Supreme Court has decided that turnabout is fair play. Continuing a string of reversals or at least in this case remands, the Supreme Court recently overturned years of Federal Circuit precedent and outlined a new standard…
Read MoreMost (and Least) Popular IdeaEsq Articles of 2014
By Stephen B. SchottIn 2014, I published 39 articles. My goal was one a week so I fell short, even counting some lame efforts. But still, 39 is a good number and based on the analytics, here are the top and bottom three articles from the last year. Please be kind to those bottom three. They need your love, too.The…
Read MoreFederal Circuit Identifies Software as Patentable Subject Matter (post Alice)
By Stephen B. SchottSoftware has been patentable subject matter for a long time but following this summer’s Supreme Court Alice v. CLS Bank decision, exactly when software crosses into patentable subject matter territory has been in flux. Last week, the Federal Circuit’s DDR Holdings, LLC v. Hotels.com, L.P. et al. decision provided some guidance on this point.The patent in dispute describes what seems commonplace…
Read MoreIP Law For Startups: A Primer Presentation
I gave this short presentation at the University of Pennsylvania’s Wharton School this past week. The idea was to introduce the students to the IP issues they may see at the beginning of their startup cycle, and only briefly touch upon the IP issues they might see at the end. If you have questions, contact me.If…
Read MoreOlder Supreme Court Cases Provide Guidance For Determining Patentable Subject Matter Post Alice
By Stephen B. Schott The question on almost every patent attorney’s mind these days is: “What is patentable subject matter in the aftermath of the Supreme Court case of Alice Corp. v. CLS Bank?” Because it is so recent, there is not yet a body of case law applying the two-part Alice test and finding claims to contain…
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