Section 103 Obviousness Rejections

Introduction Continuing with my discussion yesterday regarding rejection of patent applications based upon the examiner’s assertion that the claimed development is obvious, I am exploring the USPTO updated guidance to examiners published in early 2018.  An invention can not be patented if the development would have been obvious to a person skilled in the art at…

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Non-Analogous Art Can’t be Obvious

Introduction Many of my recent posts have been concerned with whether a development is eligible for patent protection.  This is a Section 101 question.  Recall that laws of nature, natural phenomena and abstract ideas without more are not eligible for patent protection.  Other hurdles of patenting are whether the development is novel (Section 102) or whether the development…

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Sharing Patent Ownership

Introduction Participants in a new business venture that incorporates a concept subject of a actual or intended patent application, often to seek to document their mutual participation in the venture by joining as co-inventors.  This is not a good idea. As I mentioned in my earlier blog “Who is the Inventor”, the law provides that each…

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Secret Sale is Prior Art

Introduction The US patent code states that a person is entitled to a patent if the invention is novel, non-obvious and has utility. To be novel, the invention cannot have been previously disclosed in the prior art. 35 U.S.C. Section 102(a) “Novelty; Prior Art.” states:              “A person shall be entitled to patent unless  the claimed…

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Converting ideas into cash

Introduction Good ideas can have great value.  However transforming an idea into property that can be sold or licensed is problematic.  It will be appreciated that sales and licensing of patents are the common ways to document valuable ideas that can be transform into cash.  How can an idea be converted into a patent?  What is required for a…

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REQUIREMENTS FOR A PATENTABLE INVENTION

Introduction As mentioned in “What Is A Patent”, a development must be novel, useful and non-obvious to persons skilled or knowledgeable in the applicable technology or art. Novelty To comply with the requirement that the development be novel, the invention must not have been known or used by others in the U.S. or patented or…

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PATENT APPLICATION

Introduction There are three (3) types of patents. The most common and most valuable is a utility patent. There are also design patents and plant patents. This article discusses utility patents. Utility Applications for Patents A utility patent application contains a large quantity of written text, often supplemented with drawings, that are specific to the…

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RESTRICTION REQUIREMENTS I

I’VE FILED MY APPLICATION, WHY CAN’T THEY TELL ME IF IT’S PATENTABLE? Summary A patent applicant’s first communication from the  USPTO patent examiner may be a Restriction Requirement.  The Restriction Requirement requires the applicant to choose among different application claims in order to proceed with examination. Background Typically, a patent application is filed with 3…

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