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


Returning IPR Merits Determinations to the PTAB
Executive Summary: The announced return of merits institution determinations in inter partes review to the Patent Trial and Appeal Board offers an opportunity to align decisional responsibility with institutional expertise. Because the Director-centered process already incorporates administrative patent judge consultation, the case for reform rests on giving specialist panels responsibility for collective deliberation, resolving technical disagreements, and explaining their d
Brandon Theiss
Oct 728 min read


Using DocuSign at the USPTO: A practical guide for patent applicants and practitioners
Executive Summary: The USPTO permits DocuSign, Acrobat Sign, and comparable qualifying platforms for a broad range of patent documents, including inventor declarations, powers of attorney, prosecution papers, and evidentiary declarations. Under 37 C.F.R. § 1.4(d)(4), the signing process must satisfy the Office’s software and signature requirements, preserve authentication data, and provide for personal execution by the proper signer. Practitioners should confirm the required
Brandon Theiss
Oct 514 min read


Using PCT Chapter II Before National Phase Entry
Executive Summary: Chapter II of the Patent Cooperation Treaty offers applicants an optional opportunity to address examination objections, amend the application, and obtain an international preliminary examination report before national phase entry. Its greatest value arises when that process preserves commercially meaningful claims and produces identifiable benefits in the jurisdictions where protection is sought. A favorable report remains nonbinding: it does not guarantee
Brandon Theiss
Oct 320 min read


Seeking Discretionary Denial in Ex Parte Reexamination: Patent owner timing and procedure
Executive Summary: Section 325(d) permits the USPTO to reject an ex parte reexamination request that presents the same or substantially the same art or arguments previously presented to the Office, but repetition alone does not establish an entitlement to relief. For patent owners, the central procedural question is when and how to invoke that discretion. The April 2026 procedure excludes § 325(d) arguments from the newly authorized pre-order paper and creates no separate opp
Brandon Theiss
Oct 112 min read


Information Disclosure Statements: From Filing Through Issuance
Executive Summary: Effective information disclosure statement (IDS) practice requires coordinating the duty to disclose known, material, noncumulative information with the procedural requirements for obtaining examiner consideration. 37 C.F.R. §§ 1.56, 1.97–1.98 (2026). This article examines how prosecution stage, certification requirements, submission content, and applicable fees affect disclosure decisions from filing through issuance. Related applications present particul
Brandon Theiss
Sep 2914 min read
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