Beyond the Right to Exclude: Why Large Companies Obtain Patents They May Never Assert
Executive Summary: Large companies obtain patents not only to exclude competitors, but also to influence commercial decisions long before litigation occurs. A strategically constructed portfolio can deter operating competitors through a form of mutually assured destruction, provide bargaining currency for cross-licenses, preserve future product options, control competitive design space, strengthen relationships with suppliers and partners, support standards participation, gen
One Design, Two Regimes: U.S. and EU Design Protection After LKQ
Executive Summary: This article compares U.S. design-patent law after LKQ Corp. v. GM Global Technology Operations LLC with the European Union’s unitary design regime, highlighting the different perspectives of the U.S. “ordinary designer” and the EU “informed user.” Although LKQ replaced the rigid Rosen-Durling obviousness test with a more flexible framework, recent decisions—including Dynamite Marketing and Range of Motion—show that challengers must still identify an actual
Written for the Skilled Artisan, Read by Everyone: Drafting Patent Applications for Multiple Audiences
Executive Summary: A patent application is legally evaluated through the lens of a person of ordinary skill in the art, but its practical success depends on a much broader audience: patent examiners, continuation counsel, foreign associates and national-phase examiners, judges, opposing counsel, juries, and licensing and business teams. This article argues that the solution is not to write different versions of the invention for different readers, but to develop one coherent
Patent Prosecution Appeals in Translation: Comparing USPTO PTAB Appeals and JPO Appeals Against Examiner Refusals
Executive Summary: This article compares the USPTO ex parte appeal process before the PTAB with the JPO appeal against an examiner’s decision of refusal, using each system as a teaching framework for practitioners trained in the other. Its central point is that the two systems are analogous but not interchangeable: a USPTO appeal is triggered by the “twice rejected” rule and proceeds through a record-centered, brief-driven sequence—Notice of Appeal, Appeal Brief, Examiner’s A
Mis-Mapping, Not Mini-Trial: A Case Study in the USPTO’s New Pre-Order Paper Procedure
Executive Summary: The USPTO’s new pre-order paper procedure gives patent owners a narrow but potentially consequential opportunity to challenge an ex parte reexamination request before the Office orders reexamination, but the article emphasizes that this opportunity must be framed consistently with the low SNQ threshold: the patent owner need not, and should not, try to disprove unpatentability; rather, it should show that the request misidentifies the cited reference’s teac
The Examiner Is Not Opposing Counsel: Patent Prosecution as Mediative Advocacy
Executive Summary: This article argues that examiner-level patent prosecution is better understood as a form of mediative advocacy than as the adversarial process for which lawyers are traditionally trained. Unlike litigation, prosecution involves no opposing claimant, the asserted legal right remains mutable, and both the examiner and applicant ultimately seek a correct determination of patentability, although they approach that objective from different institutional roles.
Keeping the Family Open: U.S. Continuation Practice Compared with Europe, China, Korea, and Japan
Executive Summary: U.S. continuation practice is a uniquely powerful portfolio-management tool because it allows applicants to keep a patent family pending and pursue additional same-disclosure claim sets as markets, competitors, prior art, licensing needs, and litigation positions evolve. By contrast, Europe, China, Korea, and Japan offer important but more constrained follow-on mechanisms—principally divisionals, Korea’s narrower split/separate application procedure, and po
Secret Prior Art in the USPTO and EPO: Earlier-Filed, Later-Published Patent Applications in Comparative Perspective
Executive Summary: This article compares how the USPTO and EPO treat “secret prior art”—earlier-filed patent applications that were not public when a later application was filed but later acquire prior-art effect after publication. In the United States, AIA § 102(a)(2) treats qualifying U.S. patent documents, including certain PCT publications designating the United States, as prior art as of their effective filing dates if they name another inventor; such references may be u
The Territorial Trap: Foreign Filing Restrictions for U.S. and China-Origin Inventions
Executive Summary: For inventions developed in or across the United States and China, the first patent filing decision should begin with a territorial invention-location analysis, not with inventor nationality, corporate headquarters, or preferred filing venue. The United States generally requires a foreign filing license before filing abroad for an invention made in the United States, unless a U.S. filing has been pending for at least six months without a secrecy order or an
The Global Examiner Interview: Communication, Commitment, and File-History Risk Across the USPTO, EPO, JPO, Korean, and Chinese Patent Offices
Executive Summary: Examiner interviews are a valuable prosecution tool, but their strategic significance varies sharply by jurisdiction. The central question is not simply whether an examiner will communicate with the applicant, but whether that communication carries procedural consequence, decisional authority, file-history effect, or merely informs the next formal filing. At the USPTO, interviews are routine and often powerful, but they must be recorded and may create prose
Same Office Action, Different Stakes: Responding to USPTO Office Actions in Ex Parte Reexamination and Ordinary Patent Prosecution
Executive Summary: This article explains why responding to an Office Action in ex parte reexamination requires a different strategy than responding during ordinary patent prosecution. In ordinary prosecution, the applicant is generally trying to obtain commercially useful claim scope and may have procedural flexibility through amendment, RCE practice, or continuation practice. In reexamination, by contrast, the patent owner is defending issued rights—often in parallel with li