Introduction Years ago, one of my law school professors warned that the two hardest things that we would face as attorneys would be (i) how to tell a potential client that you could see no solution to his/her problem and (ii) how to bill for work performed. I don’t offer any answers in this article. I…
#patent application
Teach Enablement
INTRODUCTION If you have read any of my previous posts, I have habitually urged that any patent application “teach enablement”. This is the sole and critical requirement of any provisional application. Please recall that I recommend filing a DIY provisional application if you elect not to seek guidance of a qualified patent attorney. My simple logic is that…
Patents, Trademarks & Copyrights
Introduction The following is a brief summary of each tool for protecting intellectual property (IP). The tools discussed are Patents, Trademarks & Copyrights. Patents Patents protect an idea (invention) that is embodied in a device or method. This is different from Copyright and Trademarks. The vast majority of patents are “utility patents”. There are also plant patents…
OVERCOMING AN OBVIOUSNESS REJECTION
Introduction Rejections under 35 U.S.C. 103 are the most common basis for an examiner refusing to allow issuance of a patent. Section 103 outlines an improvement or modification that would be obvious to a hypothetical person of ordinary skill in the art is not patentable. I have already written on this topic, i.e., “overcoming an…
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…
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…
Trade Secrets vs. Patenting
The Continuing Dilemma: Trade Secrets (Hidden Use) vs. Patent (Disclosed Monopoly) Disclaimer: Issue: Trade secrets compared to patents: 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…
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…
PATENT APPLICATION ELEMENTS
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 and the patent application requirements. Utility Patent Application Requirements The patent application requirements for a utility patent are discussed herein. A utility patent application…
STRATEGIC USE OF EXAMINER CREDITS
WHY DOES THE PATENT EXAMINER HATE ME? Introduction The patent examiner determines the fate of your patent application. In reality, you have no ability to request a different examiner or complain to the examiner’s boss. The only feasible remedy to get around an unreasonable examiner (an examiner that is either unable or unwilling to accept…