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


Who Is an Inventor—and of What?: Claims, Disclosure, and Inventorship in the United States, Europe, South Korea, China, and Japan
Executive Summary: This article examines how the meaning of “inventor” differs across the United States, Europe, South Korea, China, and Japan, focusing on whether inventorship is determined by the inventions claimed or by everything described in the application. It distinguishes the legally relevant object of the inquiry from the evidence used to identify its creators: claims may define the invention, while the specification, drawings, prior art, and development record revea
Brandon Theiss
3 days ago29 min read


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


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
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