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
Do Not Give the Requester a Second Brief: Why Patent Owners Should Usually Waive the Post-Order Statement When Ex Parte Reexamination Runs Alongside Litigation
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
Claiming the Destination: When a Desired Effect Receives Patentable Weight
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
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
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
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
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
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
From Festo to File History: Comparing U.S. Prosecution History Estoppel with EPO, Korean, Japanese, and Chinese Constraints on Claim Scope
Executive Summary: This article compares how prosecution history can limit patent claim scope in the United States, the EPO, Korea, Japan, and China. In the United States, prosecution history operates through several related doctrines: ordinary claim construction, prosecution disclaimer, amendment-based prosecution history estoppel under Festo, and argument-based estoppel where applicant remarks clearly surrender subject matter. The EPO stands apart because EPC proceedings ge
Fast Track, Different Gate: Teaching USPTO Track One and CNIPA Prioritized Examination Across U.S. and Chinese Patent Practice
Executive Summary: USPTO Track One and CNIPA prioritized examination both accelerate patent prosecution, but they operate through fundamentally different gatekeeping models. USPTO Track One is a technology-agnostic, fee-based procedural option: if the applicant files a qualifying utility or plant application, pays the required fees, observes the claim limits, and complies with the timing and prosecution rules, the invention’s technology field, commercialization status, and pu
Search First, Draft Deliberately: How a Reference-Specific Background Can Support Patent Eligibility and Preserve Claim Meaning
Executive Summary: A deliberate prefiling prior-art search can serve as a specification-design tool, not merely a patentability screen. By identifying “framing references,” accurately describing their architectures and limitations, and tying each distinction to a claimed technical mechanism, an applicant can create an intrinsic record that supports patent eligibility under 35 U.S.C. § 101 and informs later claim construction. That record may allow the patent owner to demonst