Keith Tackett, Retired Partner

Case Studies

Drafting and Filing Five Patent Applications in Five Days

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One of our large Fortune 500 clients came to us with a unique problem — a new product was shipping in a week and not a single patent had been prepared or filed for this invention. Our team quickly responded by traveling to the client’s office to collaborate with the inventors and in-house counsel. The technical expertise of our IP attorneys made it easy to get up to speed on the complexities of this unique technology and devise a patent strategy with a clear understanding of the client’s objectives.

Between the initial draft, review by inventors and in-house counsel and revisions, writing one patent application usually takes about two to three months and more than 20 hours. Our team tenaciously worked to complete five applications in less than one week. All five applications were turned into patents and since that time, foreign patents have also been filed. The product shipped on schedule and fully protected.

Final Rejection of Claims to cDNA Withdrawn After Filing Appeal Briefs

First Examiner finally rejected all pending claims because a few claims covered cDNA derived from a naturally occurring source (mRNA from a dog). The Examiner asserted that the cDNA as claimed was non-patentable subject matter based on Association for Molecular Pathology v. Myriad Genetics. The final rejection was appealed on grounds that the first Examiner identified no references and no authority that supports rejection of the pending cDNA claims. The first Examiner responded that Applicant had the burden of proof to show that the claimed cDNA did not exist in nature and Applicant failed to meet that burden.

After all briefs were submitted, the Patent Office appointed a second Examiner to continue prosecution and determine if Applicant was willing to make any amendments. Applicant agreed to consider amendments and received a request to clarify a few cDNA claims to assure that the claims did not cover the preexisting genomic DNA sequences. Applicant and the second Examiner then agreed to minor amendments that resulted in allowance.