Introduction I recently shared a post stating that computer software is currently the subject matter of approximately 60% of patent applications. This is a 50% increase since 2010. What is patentable computer software? What remains as a vexing problem is the continued muddled status of what comprises patentable software. The Federal Circuit court complains that the US…
Patent Application
APPEALING THE EXAMINER REJECTION
Introduction I recently published a blog regarding the frustrating but common rejection of a patent application based upon the examiner asserting that the invention is obvious. See Overcoming an Obviousness Rejection. Depending upon the individual circumstances, it may be worthwhile for appealing the examiner rejection. Recall obviousness under 35 U.S.C. section 103 can be a subjective exercise or…
Teach Enablement
INTRODUCTION If you have read any of my previous posts, I have habitually urged that any patent application “teach enablement”. This is the sole and critical requirement of any provisional application. Please recall that I recommend filing a DIY provisional application if you elect not to seek guidance of a qualified patent attorney. My simple logic is that…
ATTORNEY CONFIDENTIALITY- INTERVIEWS
Is it necessary to obtain a signed non-disclosure agreement from an attorney prior to disclosing your invention ? The clear answer is no. A non-disclosure agreement is not required. Attorney confidentiality applies. Communication made by the potential client to the attorney in a confidential setting for the purpose of securing legal services (as well as…
PROVISIONAL PATENT APPLICATIONS
Introduction Provisional patent applications can be of great benefit in protecting innovation. They must be used, however, with a full understanding of the limited protection provided. Discussion A provisional application is a patent application. It is a type of a utility patent application. It may be thought of as a temporary application good for only…
WHAT IS A PATENT?
Introduction What is a patent? Simply stated, a patent is the exclusive right to prevent others from making, using or selling the invention or things made using the invention. Surprising? See the following discussion. Discussion Technically, a patent does NOT give you the right to make use or sell the products of your invention since…
Documenting Inventions
Introduction Since 2013, the United States has been a “First to File” jurisdiction. Prior to 2013, the US patent law awarded patents to the first inventor, rather than the first inventor to file. Previous to this change, it was accepted practice that researchers/inventors maintain documentation of their development efforts. Documenting inventions however remains important. Typically, documentation involved maintaining…
Patents, Trademarks & Copyrights
Introduction The following is a brief summary of each tool for protecting intellectual property (IP). The tools discussed are Patents, Trademarks & Copyrights. Patents Patents protect an idea (invention) that is embodied in a device or method. This is different from Copyright and Trademarks. The vast majority of patents are “utility patents”. There are also plant patents…
OVERCOMING AN OBVIOUSNESS REJECTION
Introduction Rejections under 35 U.S.C. 103 are the most common basis for an examiner refusing to allow issuance of a patent. Section 103 outlines an improvement or modification that would be obvious to a hypothetical person of ordinary skill in the art is not patentable. I have already written on this topic, i.e., “overcoming an…
DIY Provisional Applications
Introduction I talk to many start-up entrepreneurs regarding protecting their IP. Typically they do not have a lot of time or money to seek patent protection. However Congress created the provisional application for patent procedure for the benefit of just that group of entrepreneurs. Although I do not recommend filing your own provisional application without assistance of a…