America-Israel Patent Law Blog

Observations on patents and other IP from a dual-licensed practitioner

Category: BPAI decisions

May 6, 2022

A Nice Way To Start The Day

It's always nice to open up PAIR and see this: Would be nicer if the appeal hadn't been necessary in the first place. And if the examiner got dinged (or…
July 11, 2011

Inherently Incomprehensible: Does the CAFC’s View of Inherency in In Re Kao Spell the End of Second Medical Use Patents in the USA?

The Federal Circuit’s May decision in In re Kao caught the attention of the patent prosecution community in general, and those of us working in pharma in particular, because it…
April 18, 2011

If You Add A Dependent Claim And No One’s There to Hear It, Does it Make Any Noise? – Part III: It Does, But Only if the Forest is in the U.S.A.

In December I posted about In re Tanaka, a case before the CAFC in which the question was whether or not an applicant’s desire to add a new dependent claim,…
December 8, 2010

If You Add A Dependent Claim And No One’s There to Hear It, Does it Make Any Noise? Israel PTO Rules That Application Cannot be Amended to Add Only Dependent Claims After Application Has Been Published – Part I

NOTE: This is the first part of a two-part post. This part focuses on US practice; the second part will focus on Israel practice. During ex parte patent practice in…

I’m Dan Feigelson. I’ve been practicing patent law for over 30 years. I’m also opinionated, as you may discover in reading my writings here.