Why Patent Applicants Should Preserve—Rather Than Routinely Spend—the Response Period A familiar prosecution problem begins with a deadline that was docketed correctly. The Office action arrives, and the unextended response date is entered. Substantive work, however, is scheduled backward from that date. By the time a proposed amendment reaches the inventor, the examiner has limited interview availability, foreign counsel has identified a support concern, and the client must

Every patent prosecutor has heard some version of the same question: Why should an applicant disclose a reference that might be used to reject the application? The question is understandable. Counsel is retained to advance the client’s interests, and an information disclosure statement, or IDS, may place potentially adverse information before the examiner. But patent examination is not ordinary adversarial litigation. It is an ex parte administrative proceeding in which the a

I. Introduction A PCT application designating the United States gives applicants a choice that does not exist in the same way in many other jurisdictions: enter the U.S. national stage under 35 U.S.C. § 371, or file a domestic U.S. application under 35 U.S.C. § 111(a) claiming benefit of the PCT application. Practitioners usually call the second route a bypass continuation. That choice is a U.S.-specific product of continuation practice. Other major offices may pr

Introduction The easiest comparative mistake is to say that U.S. “written description” and Chinese “support by the description” are the same doctrine under different names. They are not. They respond to a similar overclaiming problem, but they operate through different statutory provisions, different institutional settings, and different vocabularies. In the United States, the central doctrine is the written-description requirement of 35 U.S.C. § 112(a). It asks whether the s

I. Introduction The recent Federal Circuit cases on patent eligibility do not simply show that U.S. law has become hostile to particular technologies. They show something more specific and more institutional: the United States often asks threshold eligibility doctrine to perform work that other patent systems assign to inventive step, enablement, support, or claim clarity. The point is not that those other systems are necessarily more generous. They may be demanding in differ