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


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


From Argument to Evidence: The Importance of Expert Declarations in Responding to a Non-Final Office Action in Ex Parte Reexamination
Executive Summary: In ex parte reexamination, a patent owner’s response to a non-final Office Action is often a critical opportunity to build the factual record, particularly when the rejection depends on technical assumptions about prior-art references, claim mappings, system architecture, protocols, or an obviousness rationale. The article argues that attorney argument can frame the legal dispute, but expert declarations supply the evidentiary foundation needed to show why
Brandon Theiss
Aug 113 min read


From Korean “Technical Ideas” to U.S. “Practical Applications”: § 101 Strategy for Software and AI Patent Applications
Executive Summary: The article explains why Korean software and AI patent applications that appear eligible under Korean law may still face significant obstacles under U.S. patent-eligibility doctrine. Korean law focuses on whether the claimed invention is a “technical idea utilizing laws of nature” and, for software-related inventions, whether software-based information processing is concretely realized using hardware. U.S. law, by contrast, asks whether the claim falls with
Brandon Theiss
Jul 3020 min read


Claiming for Division: Why Patent Prosecutors Should Sometimes Draft Patent Claims to Invite Restriction
Executive Summary: This article argues that patent prosecutors should sometimes treat a restriction requirement as a commercial tool rather than a prosecution inconvenience. For platform technologies—such as a life-sciences program with claims to a compound, formulation, manufacturing method, dosing regimen, biomarker, drug-device combination, and second indication—the business value of the patent estate may lie in preserving separately protectable assets that can later suppo
Brandon Theiss
Jul 2821 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
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