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…

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NEW CONTINUATION RULES ANNOUNCED

The new rules were scheduled to take effect November 1, 2007. However there has been litigation challenging the authority of the US Patent Office to implement these substantive rules. A judge has agreed and a temporary injunction has been granted. In summary, the rules permit 2 continuation applications (including CIP) and one Request for Continuation…

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OBVIOUSNESS REJECTIONS POST KSR

I am concerned that there will be a significant increase in the number of examiner rejections based upon the asserted obviousness of the invention. The KSR decision has weakened the ability of the applicant to rebut those claims during prosecution. It is no longer possible to point to the absence of a suggestion, motivation or…

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PEER TO PATENT PILOT PROGRAM

The USPTO is trying something new and different. Until now, third parties only had a very limited opportunity to submit prior art to the examiner during the first 2 months after publication of the application. See Current ‘Opposition’ Practice A new program operated by the New York School of Law will be allowed to collect…

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THE FALLOUT OF KSR v. TELEFLEX

As a quick note, as the initial dust from the Supreme Court’s decision settles, the question remains what does the decision mean to the small inventor? In my view, the USPTO examiners will feel more emboldened to reject claims, stating the change was within the common knowledge of a person skilled in the art or…

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CEASE AND DESIST LETTERS

Clients know that a cease and desist letter is the typical first salvo taken against an infringer. What is not typically understood is that such letters must be carefully prepared to prevent the infringing party from using the letter as the grounds for suing (in a declaratory judgment action) the patent or trademark owner. The…

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ENABLEMENT – YOU GOTTA HAVE IT

All patent applications, including provisional applications, must teach enablement of the claimed inventions. This is required by 35 U.S.C. §112, paragraph 1. See provisional-patent and the patent application. The specification of the application must describe the manner and process of making and using the invention in such full, clear, concise and exact terms as to…

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ACCELERATED EXAMINATION PROCEDURE REVISITED

The USPTO has announced the grant of the first patent under the Accelerated Examination Procedures. Numerous commentators have opined (some strongly) that the advantages of the procedures are outweighed by inherent risks taken by the applicant (or more exactly the applicant’s attorney). Much of the concern has to do with the search and certification requirement….

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VIACOM, GOOGLE AND YOUTUBE

Google’s rumored $1.65 Billion dollar purchase of YouTube has widely reported. Google has reached agreement with a number of major producers of video content to show their work on YouTube. Apparently negotiations with Viacom have hit an impasse and Viacom upped the ante by filing a $1Billion suit against Google. One question is how well…

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