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


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


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


Small Entity Status Does Not Travel: Patent-Fee Relief at the EPO, JPO, Korean MOIP, and CNIPA
Executive Summary: “Small entity” and “micro entity” are not portable characteristics of a patent applicant. They are classifications created by U.S. law for particular applications and patents before the U.S. Patent and Trademark Office (“USPTO”). A company that pays small-entity fees at the USPTO does not automatically receive a corresponding reduction before the European Patent Office (“EPO”), Japan Patent Office (“JPO”), Korea’s Ministry of Intellectual Property (“MOIP”),
Brandon Theiss
Jul 2624 min read


One Design, Two Regimes: U.S. and EU Design Protection After LKQ
Executive Summary: This article compares U.S. design-patent law after LKQ Corp. v. GM Global Technology Operations LLC with the European Union’s unitary design regime, highlighting the different perspectives of the U.S. “ordinary designer” and the EU “informed user.” Although LKQ replaced the rigid Rosen-Durling obviousness test with a more flexible framework, recent decisions—including Dynamite Marketing and Range of Motion—show that challengers must still identify an actual
Brandon Theiss
Jul 2217 min read
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