INTRODUCTION: After you have achieved the award of a patent, you may still be subject to challenge from competitors. You may face a post patent grant challenge. Part of the America Invents Act or AIA the USPTO established a procedure called a Post Grant Review. The procedure gives third parties up to 9 months after the grant of…
Patent Application
What NOT To Do Before You File
Introduction This is an update of my previously published WARNING. If you have made an innovation, you don’t want to lose the right to ownership of your invention and the opportunity to exploit it for possible income. The easiest way to lose your rights is to make a public disclosure of the innovation. Public disclosure…
Priority Review: Move to Front of Line
INTRODUCTION: The wait time between filing you patent application and the first office action can be frustratingly long. Priority Review Track One. See my earlier article for Expedited Examination. The duration depends upon the Group Art Unit (GAU) to which your application has been assigned. You may have limited ability to influence the GAU to which your application is…
Design Choice and Obviousness
INTRODUCTION: Many of my recent articles have focused upon the whether an innovation is eligible for patent protection. This has been described as a Section 101 issue. Many innovations have been barred from patenting as being merely abstract ideas. This is a confused area. However, even if an innovation is deemed patentable subject matter, it still needs to be…
Appealing an Obviousness Rejection
INTRODUCTION: This article looks at appealing an obviousness rejection. It should not be a surprise that there are obstinate patent examiners. For whatever reason, they can be determined to not allow your patent application. Frequently, this situation can be experienced when an examiner rejects your application based on alleged obviousness (a 103 rejection). An assertion of obviousness…
Design Patents: $1 Billion Stepchild
INTRODUCTION: Everyone remembers Apple being awarded $1 billion in damages against Samsung for copying the design of Apple’s iPhone. The award was the product of Apple obtaining a patent on a smart phone design, particularly the curved corners of the smart phone frame. Samsung’s copying of a curved frame probably seemed a trivial detail to some. However Apple…
Patent Classification Review
Introduction Crafting the specification, and particularly the claims, of a patent application can be critical to the chances of ultimate allowance of the application into a legally enforceable patent. This applies not only to distinguishing your invention over the prior art or confirming that your invention is eligible for patent protection, e.g., not merely an abstract…
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…
Licensing: How to slice the pie
INTRODUCTION: Rights in intellectual property can be transferred by sale, i.e., “assignment” or by granting a limited interest, e.g., a “license” or “licensing”. See my article on assignments. To use the analogy of land, title or ownership can be conveyed in land via a written deed recorded with the appropriate government agency. Similarly, a limited right to use or…
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…