Patent or Trademark?

  Introduction: I continue to receive questions prefaced with a statement “I have an idea and I don’t know if I should patent it or trademark it?”  Patent or Trademark.  The question is often stated in various ways but I think you get the idea.  There are fundamental differences between requirements and rights of patenting…

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Sample Patent Flow Chart

Introduction: Attached below is a sample patent flow chart.  I start with the inventor’s conception of the idea.  Included are the steps to be taken to reach the point of possible patent filing.  (Note my sample assumes that a provisional application is filed first.  However it is possible to go directly to the Non-provisional application…

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Track One Program of USPTO

OBSERVATION: Track One: I recently extolled the virtues of paying an added fee at filing of your application in order to be placed on the UPSTO “Track One” Program for expedited review.  See my article “Priority Review, Move to the Front of the Line”. I reviewed the file wrapper history of a patent case filed on…

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Avoiding the “Un-patentable Abstract Idea”

INTRODUCTION: I have written many times of the ambiguity created by the courts in the Alice and Mayo decisions regarding what is patentable subject matter.  I am today suggesting a method of “avoiding the un-patentable abstract idea”. What I am referring to is the rejection of patentable innovations on the basis that the patent is merely claiming an abstract idea.  An abstract idea…

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Who owns the invention?

Introduction: Ownership of inventions can be confusing.  The inventor may not be the owner.  If there are more than one inventor, it is possible that each separately owns an undivided interest in the whole with independent rights to exploit the invention.  This is problematic. Often the invention is made by an employee of a company.  The invention is typically…

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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. An invention product sale, including a sale made under a confidentiality agreement, can lose patent rights. See article Patent Elements. 35 U.S.C. Section 102(a) “Novelty; Prior Art.” states:              “A person shall be…

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Monetizing Your Idea

Introduction Good ideas can have great value.  However monetizing your idea by transforming 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…

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