Prior Use Defense: Trade Secrets v. Patenting II

Indroduction This blog is a clarification of my prior article entitled Trade Secrets v. Patenting.  In my prior article, I stated that a party using a technique or method in manufacturing as a trade secret would lose the right to continue practicing the trade secret if the secret technique or method became subject of a patent by…

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103 Obviousness Rejections II

Introduction I am following up on my recent post Section 103 Obviousness Rejections pertaining to the 2018 USPTO Guidelines issued to USPTO examiner.  Recall that in 2007, the US Supreme Court broadened the basis for an examiner to reject a claim of a patent application on the assertion that the development subject of the claim was obvious…

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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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Clarifying What are Patent Ineligible Abstract Ideas

Introduction: Intertwined with the long ambiguity of the scope of patent eligible software has been the difficulty in defining what are patent ineligible “abstract ideas”.  Recall 35 U.S.C. Section 101 states that all things invented by man are patentable subject matter except laws of nature, natural phenomena or abstract ideas.  These three items are referred to below as…

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BEHIND THE FIRST TO FILE RULES

Introduction As you are probably aware, the USPTO rules changed March 16, 2013 to make the first inventor to file eligible to obtain a patent. (Prior to this change in law, patents were awarded to the first person to invent, regardless of whether another (later inventor) first filed an application.)  Implementation of this “first to…

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Review of CBM Procedure

Introduction I very recently wrote an article regarding the use of the Covered Business Method review procedure created under the AIA of 2012.  The Covered Business Method review procedure is a powerful tool that can be used to challenge an issued patent that pertains to a business method.  See Junk Patents and Covered Business Methods.  The…

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MICRO-ENTITY DISCOUNTED FEES

Introduction The America Invents Act of 2012 is best known for establishing “the First Inventor to File” system.  However it also created or defined “Micro-Entities”.  Patent filing fees for micro-entities are discounted.  The discount is  75 percent of the fees paid by non small entities, i.e., entities have more than 500 employees.  Unfortunately the definition…

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Expediting Patent Examination

Introduction I typically estimate that the patent examination requires 2 or 3 years from filing to allowance of a patent.  However the duration of patent prosecution is often longer for applications pertaining to business methods, e-commerce and document processing. There are procedures to expedite or accelerate patent examination. The USPTO provides two options intended to expedite…

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PATENTS FOR BUSINESS METHODS (REVISED)

Introduction Methods of conducting business can be patentable.  However, the USPTO inquiry expands beyond the questions of whether the method is new (Section 102) or whether the method is an obvious variation of prior art methods (Section 103).  Further, the pendency for examination of business method applications is the longest within the USPTO.  Also see…

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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-entities provision is effective immediately (unlike many of the provisions of America Invents Act…

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