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Showing posts from May, 2018

Are Applicants ALWAYS Able To Survive Art Unit 2138?

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Art Unit 2138 has issued patent applications for "Computer Architecture, Software, and Information Security: Memory Access and Control" at a clip of 87.5% (1626 out of 1859 cases) post-Alice.


That said, are applicants ALWAYS able to survive AU 2138? Not quite. 4.4% (82 out of 1859) of AU 2138 cases finally disposed post-Alice had at least one Request for Continued Examination (RCE) but were still abandoned. Yes, that means 95.6% of cases in AU 2138 were either issued, or the applicant gave up in the first round of prosecution.


Taking a slightly different approach in comparison to my previous post on how to successfully navigate AU 3689, I hope to explain or at least hypothesize in this post how the remaining 4.4% of applications became abandoned in AU 2138 post-Alice. Where did it go wrong? Here are some data-driven tips to avoid the identified pitfalls.

1. Be Willing To Continue Examination In AU 2138

As suggested, 95.6% of cases in AU 2138 were either issued, or the applica…

Navigating Art Unit 3689, If You Must

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Despite your best efforts, suppose your U.S. patent application was assigned to Art Unit 3689, the art unit for "data processing: financial, business practice, management, or cost/price determination" with an allowance rate post-Alice of (1502 abandoned, 95 granted) 5.9%. For what it's worth, most other art units have much higher allowance rates, such as Art Unit 2827 for "static information storage and retrieval" with an allowance rate post-Alice of 93%. That said, if you got routed to AU 3689, now what?

One suggestion I've heard frequently is to abandon hope all ye who enter here, but I suggest a slightly more nuanced approach.

1. Who's had some success in AU 3689?

First, it's best to work with attorneys who are experienced with Alice issues. (Note: I do not work at a law firm, and this is not a sales pitch.) They should know best when to recommend abandonment or pursuit of the target subject matter, and they should also know best how to pursue the t…

Bulk Prosecution: An Example with Information Disclosure Statements

"Bulk patent prosecution" is the process of realizing efficiencies by performing multiple similar patent prosecution tasks simultaneously. For example, one might want to perform prior art searches and file information disclosure statements (IDS's) for 100 patent applications, perhaps to later improve the weight of the presumption of validity if the applications are granted. This could be important if the applications have clear points of novelty in crowded spaces. To that end, one wouldn't need to draft up 100 IDS documents separately. In fact, doing so would be incredibly inefficient.

There are only a few key pieces of information that would change between the different information disclosure statements, and there are a few key tools that could help any practitioner achieve the goal.

TOOL FOR FINDING A REASON FOR BULK PROSECUTION
How do you know which cases might need more references to cite on the face of the patent? LexisNexis PatentAdvisor can tell you which case…