CHALLENGING JUNK PATENTS

Introduction: The USPTO is often criticized for allowing worthless or junk “developments” to be patented.  As a business, you may be threatened with a competitor asserting a newly issued patent.  The new patent may apply to your long standing device or business method.  You may think that either you must submit to the demand for licensing the right…

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Current Inter Partes Review

Introduction First, the AIA revised the prior Inter Partes Review practice discussed in an earlier blog. This blog pertains only to the new practice (post AIA).  You may also want to review my blog “Challenges to your Patent” Discussion Inter Partes Review can only be initiated after 9 months for the patent grant.  This is consistent with the 9 month…

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RESTRICTION PRACTICE III

Introduction I have previously addressed aspects of the “puzzling topic” of restriction practice.  See Restriction Requirements I and Restriction II 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…

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Notice to Competitor of Application

Introduction: Unless you expressly opt out, your non-provisional application will be published 18 months after the application filing date. Note if your non-provisional application claims priority to a prior provisional application, the 18 months are calculated from the filing date of the provisional application.  Thus, your application can be published as soon as 6 months after filing….

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WHAT NOT TO DO BEFORE YOU FILE

Introduction In many circumstances, once the innovative horse has galloped out (or been lured out) of the barn, it is impossible to lead it back. Note also, that even your own offer to let the horse out of the barn or offer to sell the horse, sight unseen, to a potential buyer, can jeopardize patent…

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Trade Secrets vs. Patenting

The Continuing Dilemma: Trade Secrets (Hidden Use) vs. Patent (Disclosed Monopoly) Disclaimer: I am biased against protecting know-how as a trade secret.  I participated in a 3 years chase of ex-employees turned competitors utilizing a trade secret manufacturing technique.  The burden of establishing the fact that the technique (consistently held behind the curtain and protected as the…

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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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PRIORITIZED EXAMINATION

Introduction The USPTO is sensitive to the time delays experienced in the prosecution of patent applications.  Prosecution of a utility application can exceed two to three years.  The Patent Office has tried various methods to accelerate the process.  For example, certain medical applications, environmental applications, and elderly inventors can receive priority.  The Patent Office now…

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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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