APPEALING THE EXAMINER REJECTION

Introduction I recently published a blog regarding the frustrating but common rejection of a patent application based upon the examiner asserting that the invention is obvious.  See  Overcoming an Obviousness Rejection.  Depending upon the individual circumstances, it may be worthwhile for appealing the examiner rejection.   Recall obviousness under 35 U.S.C. section 103 can be a subjective exercise or…

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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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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…

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PATENT TERM

Introduction The term of a U.S. patent extends for 20 years from the date the non-provisional application was filed.  Prior to 1995, the patent terms was 17 years after the patent issued.   Since the patent term begins at the date of application filing, this means that the patent term is running during the term…

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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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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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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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Secret Sale is Prior Art

Introduction The US patent code states that a person is entitled to a patent if the invention is novel, non-obvious and has utility. An invention product sale, including a sale made under a confidentiality agreement, can lose patent rights. See article Patent Elements. 35 U.S.C. Section 102(a) “Novelty; Prior Art.” states:              “A person shall be…

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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…

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