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


From PCT Search to U.S. Fast Track: Using the Patent Prosecution Highway in a Section 371 National Stage
Executive Summary: A U.S. national-stage application under 35 U.S.C. § 371 may qualify for accelerated examination through the Patent Prosecution Highway, but an international search report citing only “A” references does not itself establish eligibility. The applicant must review the latest relevant PCT written opinion or international preliminary report and confirm that at least one claim received affirmative findings for novelty, inventive step, and industrial applicabilit
Brandon Theiss
Aug 2515 min read


Behind the File Wrapper: Discoverability of Patent-Prosecution Materials: Privilege, Work Product, Patent Agents, Foreign Associates, and Internal Counsel Communications
Executive Summary: Patent-prosecution files are neither categorically privileged nor automatically subject to production; each document requires a forum-specific analysis of its purpose, participants, confidentiality, and relationship to anticipated litigation. Attorney-client privilege protects qualifying confidential communications made to obtain or provide legal advice, while work-product protection generally requires a concrete litigation nexus that routine ex parte prose
Brandon Theiss
Aug 1926 min read


Same Twelve Months, Different Clock: Translating Patent Grace Periods Between the United States and Japan
Executive Summary: The United States and Japan each offer a one-year route around certain patent-defeating disclosures. That shared duration is useful—and dangerously incomplete. The U.S. rule asks whether a disclosure falls within a source- and subject-matter-based exception to prior art measured from the claimed invention’s effective filing date. Japan’s rule asks whether a disclosure that would otherwise defeat novelty or inventive step qualifies for a statutory exception
Brandon Theiss
Aug 1720 min read


From Abstract Idea to Technical Solution
Executive Summary: Artificial-intelligence inventions are patentable in both the United States and China, but neither jurisdiction protects “AI” as an abstract label or rewards generic use of a known model in a new field. U.S. practice applies the Alice/Mayo eligibility framework, with current USPTO guidance emphasizing the claim as a whole, a specific improvement to technology, and evidence connecting that improvement to the claimed mechanism; properly supported declarations
Brandon Theiss
Aug 1525 min read


From Rule 132 Declarations to Korean Experimental Evidence: A Two-Way Guide for U.S. and Korean Patent Prosecutors
Executive Summary: This article compares U.S. 37 C.F.R. § 1.132 declaration practice with the closest Korean analogue: a KIPO written argument supported by experimental results, comparative data, expert explanation, or other technical evidence. It explains that both systems use evidence to overcome examiner rejections when attorney argument alone is insufficient, especially in obviousness or inventive-step disputes involving unexpected or advantageous technical effects. But
Brandon Theiss
Aug 1326 min read
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