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

Executive Summary: This article argues that a patent owner facing a third-party-requested ex parte reexamination alongside infringement litigation should ordinarily waive the optional post-order statement authorized by 35 U.S.C. § 304. Filing before the first Office action requires the owner to address potential theories before the examiner has identified an actual rejection, gives the requester a statutory opportunity to refine its challenge, and creates additional prosecuti

Executive Summary: Patent claims frequently state not only what an invention is or does, but what it is intended to accomplish: reducing latency, improving stability, treating disease, preventing movement, or achieving a specified performance level. Whether that language receives “patentable weight” cannot be answered by a rule about words such as “whereby,” “wherein,” “for,” or “configured to.” The sound analysis has three gates, the second of which is conditional. Gate One

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

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