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


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


The Three-Month Date Is a Backstop, Not a Filing Target
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
Brandon Theiss
Jun 219 min read


Candor Without Capitulation: The Philosophical Case for Filing an Information Disclosure Statement
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
Brandon Theiss
Jun 1911 min read
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