Monthly Archives: August 2010

Method Claims Rejected on the Basis of 35 U.S.C. 101

On August 18, 2009, the U.S. Patent Office issued patent number 7,577,655 to Google. This patent contains method claims. This type of claim is particularly of interest to companies desiring to obtain claims whose steps are executed by a computer. Recently, the Supreme Court issued an opinion on the patentability of method claims. The prosecution […]

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Electronic Discovery Sanctions Narrowly Avoided by Lack of Bad Faith by Attorneys

On April 2, 2010, Magistrate Judge Barbara Major issued her opinion (Case No. 05cv1958-B (BLM) in U.S. District Court for the Southern District of California) as to whether the attorneys involved in the Qualcomm v. Broadcom dispute should be sanctioned. The Qualcomm v. Broadcom dispute was a leading legal scandal from 2008 to 2009 due […]

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Proper Responses to Office Actions

Frequently, the U.S. Patent Office rejects the claims submitted in patent applications. An Office Action memorializes the rejection. If an applicant cares to respond, a response to the Office Action must fulfill 37 C.F.R. 1.111(b). In pertinent part, 37 C.F.R. 1.111(b) states that in order to be entitled to “further examination,” the applicant must reply […]

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Duty of Candor to the U.S. Patent Office

On April 27, 2010, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) issued a decision (PDF format) that extends the application of the duty of candor under 37 C.F.R. ยง 1.56(a). The duty of candor is relevant to a defense of inequitable conduct when accused of patent infringement. Inequitable conduct can cause […]

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