RESTRICTION PRACTICE III MPEP §806.5 pertains to combinations of embodiments such as an apparatus and method of utilizing the apparatus. Alternatively, it may pertain to a process and a method for practicing the process. The section also pertains to combinations and sub-combinations. (This arcane subject matter. I have borrowed heavily from the text of the…
patent
RESTRICTION REQUIREMENT II
RESTRICTION PRACTICE II Remember a restriction requirement is frequently the first communication the Applicant receives from the examiner. A restriction requires that the Applicant select or elect among multiple “inventions” asserted by the examiner to be contained in the original application. I have written an introduction to this “puzzling topic” entitled Restriction Requirements. I want…
RESTRICTION PRACTICE
This Article was updated October 21, 2013. See Blog Restriction Practice II. The basic rule is that each patent can claim only one distinct and independent invention. This is subject to the rules pertaining to restriction practice and the filing of divisional applications. A related rule is that two patents can’t claim the same invention….
INTER PARTES REVIEW
INTER PARTES REVIEW For patents having a filing date of earlier than March 16, 2013, i.e., the date the America Invents Act is fully implemented, an issued patent can be challenged under the Inter Partes Review provisions of the AIA or “first to file” statute. Such patents are not subject to the Post Grant Review…
POST GRANT REVIEW
POST GRANT REVIEW After you have achieved the award of a patent, you may still be subject to challenge. Part of the new patent law (America Invents Act or AIA) is the procedure called a Post Grant Review. The procedure gives third parties 3 months after the grant of your patent to challenge the award….
PRE BRIEF APPEAL CONFERENCE
Every practitioner has encountered a recalcitrant examiner or an examiner that exhibits an unexplained animus to the invention. Parallel with this observation is the thought the “if I could just get this file in front of someone else, i.e., someone rational, the claims would be allowed.” The Patent Office provides an imperfect remedy. In a…
DISCOUNTED PATENT FEES, SMALL ENTITIES AND MIRCO-ENTITIES
The America Invents Act of 2011 is best known for establishing “the First Inventor to File” system. However it also created or defined “Micro-Entities”. Micro-Entities are entitled to a 75 percent discount on filing fees. Unfortunately the definition of a Micro-Entity is convoluted. First, a Micro-Entity is a small entity, i.e., it has fewer than…
PRIORITIED EXAMINATION
Sensitive to the time delays experienced in prosecuting patent applications through the USPTO, the Patent Office has tried various methods to accelerate the process. For example priority is given for certain medical applications, environmental solutions and the advanced age of the inventor. The USPTO still maintains the program for accelerated examination wherein a definitive…
AMERICA INVENTS ACT PART II
One of the new provisions of the America Invents Act is the new category of applicants termed “micro entities”. The principal advantage of meeting the classification of a micro entity is that the USPTO fees are discounted 75%. The operation of the micro entity provision is effective immediately (unlike many of the provisions of America…
AMERICA INVENTS ACT
The new law introduces many changes. A brief summary is: Third Party Pre-Issuance Submissions Any third party may submit any patent application, patent, or printed publication in regard to a pending application. The submission must be made before the earlier of notice of allowance or the later of 6 months after the date on…