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


From Abstract Idea to Technical Solution
Executive Summary: Artificial-intelligence inventions are patentable in both the United States and China, but neither jurisdiction protects “AI” as an abstract label or rewards generic use of a known model in a new field. U.S. practice applies the Alice/Mayo eligibility framework, with current USPTO guidance emphasizing the claim as a whole, a specific improvement to technology, and evidence connecting that improvement to the claimed mechanism; properly supported declarations
Brandon Theiss
Aug 1525 min read


Who Is an Inventor—and of What?: Claims, Disclosure, and Inventorship in the United States, Europe, South Korea, China, and Japan
Executive Summary: This article examines how the meaning of “inventor” differs across the United States, Europe, South Korea, China, and Japan, focusing on whether inventorship is determined by the inventions claimed or by everything described in the application. It distinguishes the legally relevant object of the inquiry from the evidence used to identify its creators: claims may define the invention, while the specification, drawings, prior art, and development record revea
Brandon Theiss
Aug 1129 min read


From Festo to File History: Comparing U.S. Prosecution History Estoppel with EPO, Korean, Japanese, and Chinese Constraints on Claim Scope
Executive Summary: This article compares how prosecution history can limit patent claim scope in the United States, the EPO, Korea, Japan, and China. In the United States, prosecution history operates through several related doctrines: ordinary claim construction, prosecution disclaimer, amendment-based prosecution history estoppel under Festo, and argument-based estoppel where applicant remarks clearly surrender subject matter. The EPO stands apart because EPC proceedings ge
Brandon Theiss
Aug 922 min read


Fast Track, Different Gate: Teaching USPTO Track One and CNIPA Prioritized Examination Across U.S. and Chinese Patent Practice
Executive Summary: USPTO Track One and CNIPA prioritized examination both accelerate patent prosecution, but they operate through fundamentally different gatekeeping models. USPTO Track One is a technology-agnostic, fee-based procedural option: if the applicant files a qualifying utility or plant application, pays the required fees, observes the claim limits, and complies with the timing and prosecution rules, the invention’s technology field, commercialization status, and pu
Brandon Theiss
Aug 713 min read


Bayh–Dole Across Borders: Government-funded inventions in the United States, EU/Horizon Europe, Germany, Japan, China, and South Korea—organized by coverage, allocation, and continuing
Executive Summary: Bayh–Dole is best understood not as an automatic university-ownership rule, but as a conditional government–contractor bargain that permits a contractor to retain title to qualifying federally funded inventions while preserving disclosure and patenting duties, utilization reporting, a paid-up government license, domestic-manufacturing safeguards, nonprofit-specific restrictions, and discretionary march-in authority tied to practical application. A comparati
Brandon Theiss
Aug 333 min read
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