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Divergent Patent Law Blog
Commentary on U.S patent prosecution, PTAB practice, Federal Circuit developments, and cross-border patent strategy.


When "One or More Processors" Still Requires One: Functional Allocation After Salazar and Finjan
Executive Summary: Patent claims frequently recite “one or more processors configured to” perform multiple functions, but that language does not necessarily permit several processors to divide those functions among themselves. Federal Circuit decisions including Convolve, Salazar, and Finjan distinguish numerical scope from functional identity: although “a processor” ordinarily encompasses one or more processors, at least one qualifying processor may still need to perform—or
Brandon Theiss
6 hours ago19 min read


One Claim, Many Paths: Multiple Dependent Claims in the United States, Europe, China, Korea, and Japan
Executive summary. A multiple dependent claim can compress several claim combinations into one numbered claim. That economy is attractive in offices that charge by numbered claim, but it is less attractive in the United States, where fee calculations expand the claim into its alternative dependencies and a separate surcharge applies. The most consequential difference is nested dependency: PCT Rule 6.4 and the rules of the United States, China, Korea, and Japan bar a multiple
Brandon Theiss
2 days ago14 min read


Who Owns the University Invention? Inventorship and Patent Ownership Across Academic Roles
Executive Summary: University inventions require two distinct but coordinated inquiries: inventorship follows the patent claims, while ownership follows the chain of title. The same federal inventorship standard applies to undergraduates, graduate students, postdoctoral researchers, professors, and staff, regardless of academic rank, funding responsibility, supervision, or authorship credit. Ownership, by contrast, depends on the individual’s relationship to the institution a
Brandon Theiss
4 days ago21 min read


Madrid for Patent Attorneys: The PCT Analogy, the Paris Priority Trap, and Why Madrid Is Not PPH
Executive Summary: The Madrid Protocol is best understood not as a worldwide trademark or a full trademark analogue to the Patent Cooperation Treaty (“PCT”), but as a centralized filing and portfolio-administration mechanism that delivers requests for protection to designated trademark offices for examination under local law. The PCT generally buys time and patentability information through international search, preliminary evaluation, and deferred national-phase entry; Madri
Brandon Theiss
6 days ago17 min read


The Applicant Is Not Necessarily the Owner: Filing U.S. Patent Applications for Employee Inventions
Executive Summary: This article explains why, for employee inventions, naming the employer as the applicant under 35 U.S.C. § 118 and Rule 1.46 generally provides greater continuity and corporate control than naming the employee-inventor, particularly if the employee later leaves, becomes unavailable, or refuses to cooperate. Employer-applicant status allows the company to direct prosecution, appoint counsel, and, when the statutory requirements are satisfied, execute a subst
Brandon Theiss
Aug 3125 min read
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