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


Same Office Action, Different Stakes: Responding to USPTO Office Actions in Ex Parte Reexamination and Ordinary Patent Prosecution
Executive Summary: This article explains why responding to an Office Action in ex parte reexamination requires a different strategy than responding during ordinary patent prosecution. In ordinary prosecution, the applicant is generally trying to obtain commercially useful claim scope and may have procedural flexibility through amendment, RCE practice, or continuation practice. In reexamination, by contrast, the patent owner is defending issued rights—often in parallel with li
Brandon Theiss
Jul 413 min read


SMEDs After the USPTO’s 2026 Guidance: Rule 132 Declarations, Corroboration, and the Need for a Court-Ready § 101 Record
Executive Summary: This article argues that Subject Matter Eligibility Declarations (“SMEDs”) can be valuable prosecution tools for building a factual record in response to § 101 rejections, but only if they are used with discipline. A SMED should not ask an inventor or expert to declare that claims are patent eligible; rather, it should provide claim-tethered, corroborated technical facts showing how a person of ordinary skill in the art would understand the specification an
Brandon Theiss
Jul 214 min read


Patent-Term Relief in Korea and the United States: Distinguishing Patent-Office Delay from Regulatory Delay
Executive Summary: This article explains that patent-term relief in Korea and the United States should be analyzed by the legal source of the lost time, not by the shared shorthand of “extension.” In the United States, patent term adjustment compensates for patent-office delay under 35 U.S.C. § 154, while patent term extension compensates for regulatory-review delay under 35 U.S.C. § 156. Korea has comparable but distinct regimes: Article 92-2 addresses delayed patent registr
Brandon Theiss
Jun 2911 min read


Cross-Field Prior Art and Hindsight: U.S. Analogous-Art Doctrine and the EPO Problem-Solution Approach
Executive Summary: This article compares U.S. analogous-art doctrine with the EPO problem-solution approach through Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., where the Federal Circuit rejected an obviousness challenge because the petitioner linked a cross-field automotive reference to another prior-art reference rather than to the claimed drug-delivery invention. Under U.S. law, each relied-upon reference must be in the same field of endeavor as the claim
Brandon Theiss
Jun 2619 min read


Lean Patent Operations: Jidoka, Automation, and AI in Patent-Prosecution Workflows
Executive Summary Patent prosecution is legal knowledge work, but it is also repeatable process work: new application filings, formalities, assignments, IDS submissions, Office communication processing, allowance, issuance, maintenance fees, foreign filing, and portfolio reporting all depend on accurate information, timely handoffs, reliable controls, and appropriate professional supervision. This white paper argues that patent operations can be improved by applying Lean Six
Brandon Theiss
Jun 2321 min read
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