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Prosecution First Blog

Finnegan's Prosecution First Blog provides news and information about patent prosecution practice before the U.S. Patent and Trademark Office.
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Recent Insights in Prosecution First Blog

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Prosecution First Blog

Expecting the “Unexpected”: Asserted Claims Found Invalid After Allegedly “Unexpected Results” Suggested in Prior Art References Expecting the “Unexpected”: Asserted Claims Found Invalid After Allegedly “Unexpected Results” Suggested in Prior Art References

January 27, 2023

Prosecution First Blog

Prosecution Pointer 365 Prosecution Pointer 365

January 26, 2023

Prosecution First Blog

PTA and After-Allowance Papers: Damned If You Do, Damned If You Don’t? PTA and After-Allowance Papers: Damned If You Do, Damned If You Don’t?

January 20, 2023

Prosecution First Blog

Prosecution Pointer 364 Prosecution Pointer 364

January 18, 2023

Prosecution First Blog

Federal Circuit Clarifies the Standard of Review for Invalidity Challenges Federal Circuit Clarifies the Standard of Review for Invalidity Challenges

January 13, 2023

Prosecution First Blog

Prosecution Pointer 363 Prosecution Pointer 363

January 11, 2023

Prosecution First Blog

The CCPA’s Lasting Impact on U.S. Patent Law - an Examination of CCPA Definiteness Decisions The CCPA’s Lasting Impact on U.S. Patent Law - an Examination of CCPA Definiteness Decisions

January 6, 2023

Prosecution First Blog

Prosecution Pointer 362 Prosecution Pointer 362

January 5, 2023

Prosecution First Blog

Federal Circuit Affirms Motion to Strike and Motion for Summary Judgment After Expert Applies “Materially Different” Claim Construction Federal Circuit Affirms Motion to Strike and Motion for Summary Judgment After Expert Applies “Materially Different” Claim Construction

December 30, 2022

Prosecution First Blog

Prosecution Pointer 361 Prosecution Pointer 361

December 29, 2022

Prosecution First Blog

Prosecution Pointer 360 Prosecution Pointer 360

December 21, 2022

Prosecution First Blog

A "Driver" in Claim Construction: Claim Differentiation and Intrinsic Evidence in the Specification Are Important Factors for Defining Language in a Claim A "Driver" in Claim Construction: Claim Differentiation and Intrinsic Evidence in the Specification Are Important Factors for Defining Language in a Claim

December 16, 2022

Prosecution First Blog

Prosecution Pointer 359 Prosecution Pointer 359

December 15, 2022

Prosecution First Blog

Inequitable Conduct Claim Can Progress Even After the Case Is Complete Inequitable Conduct Claim Can Progress Even After the Case Is Complete

December 9, 2022

Prosecution First Blog

Prosecution Pointer 358 Prosecution Pointer 358

December 7, 2022

Prosecution First Blog

Prosecution Pointer 357 Prosecution Pointer 357

November 30, 2022

Prosecution First Blog

Distinct Elements or Parts of a Whole? Obviousness Challenge Denied in SolarEdge Techs., Inc. v. Fronius Int’l GMBH Distinct Elements or Parts of a Whole? Obviousness Challenge Denied in SolarEdge Techs., Inc. v. Fronius Int’l GMBH

November 25, 2022

Prosecution First Blog

Prosecution Pointer 356 Prosecution Pointer 356

November 23, 2022

Prosecution First Blog

Credibility Matters: Defendants’ Expert Witness Helps Bring a Non-Infringement Win Credibility Matters: Defendants’ Expert Witness Helps Bring a Non-Infringement Win

November 18, 2022

Prosecution First Blog

Prosecution Pointer 355 Prosecution Pointer 355

November 16, 2022

Prosecution First Blog

What Is an “Account”? Nonobviousness Argument Based Only on Proposed Construction Backfires for Caselas What Is an “Account”? Nonobviousness Argument Based Only on Proposed Construction Backfires for Caselas

November 11, 2022

Prosecution First Blog

Prosecution Pointer 354 Prosecution Pointer 354

November 9, 2022

Prosecution First Blog

The CCPA’s Lasting Impact on U.S. Patent Law – An Examination of CCPA Enablement Decisions The CCPA’s Lasting Impact on U.S. Patent Law – An Examination of CCPA Enablement Decisions

November 4, 2022

Prosecution First Blog

Prosecution Pointer 353 Prosecution Pointer 353

November 2, 2022

Prosecution First Blog

Prosecution Pointer 352 Prosecution Pointer 352

October 26, 2022

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