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Category: Patent (page 1 of 2)

Intillectual Property Links: Patents, Trademarks and Copyrights

By Jeff Watson

Jeff Watson is a patent attorney with 12+ years of experience.  He tracks the U.S. Patent and Trademark Office  and the Copyright Office for news.  Please find his most recent update below.

The United States Patent and Trademark Office (“USPTO”) published International Trademark Classification Changes with a final rule to incorporate classification changes adopted by the Nice Agreement Concerning the International Classification of Goods and Services for the purposes of the Registration of Marks (Nice Agreement).  Link

The United States Copyright Office has published an interim rule amending its regulations concerning the recordation of transfers of copyright ownership and other documents pertaining to a copyright under 17 U.S.C. Section 205, and notices of termination under sections 203, 304(c), and 304(d). Link

The United States Copyright Office has published a final rule establishing a separate, lower filing fee for recording documents with the Office when they are submitted with an electronic title list, i.e., a list of certain indexing information about the works to which such documents pertain.  Link.

The United States Copyright Office has implemented a series of technical upgrades to its electronic registration system.  Link.

The NC bar has published an article by Jacob Moore regarding the recent Federal Circuit decision in In Re Janssen that held that a patent issuing from a continuation-in-part (CIP) application is not eligible for 35 USC Secton 121 safe harbor protection, even if the patent is re categorized as a divisional application during reexamination.  Thus, the court determined that the patent at issue—US 6,284,471 (the ’471 Patent)—was invalid over reference patents US 5,656,272 (the ’272 Patent) and 5,698,195 (the ’195 Patent) under the doctrine of obviousness-type double patenting.  Link.

The United States Patent and Trademark Office (“USPTO”) electronically provided the ninth edition, Revision 08.2017, of the Manual of Patent Examination Procedure (MPEP).  Link.

The United States Patent and Trademark Office (“USPTO”) provided a notice that addresses the new practice of requiring separate maintenance fees in each reissued patent based on a single original utility patent, and in original utility patents for which a reissue application is pending and at least one reissue patent has already issued. The new practice for multiple reissued patents and certain original patents that are the basis for reissue applications is set forth in the recent final rule to adjust patent fees. See Setting and Adjusting Patent Fees During Fiscal Year 2017, 82 FR 52780, 52791 (November 14, 2017).  Link.

The United States Patent and Trademark Office (“USPTO”) provided a final rule with changes in requirements for collective trademarks and services marks.  Link.

The United States Copyright Office has published a final rule amending regulations that govern the deposit requirements for certain types of literary works and musical compositions. Link.

The United States Copyright Office has provided notice of modernizing its practices to increase the efficiency of the group registration option for photographs. Link.

Call Jeff Watson for a Free patent consultation (704) 625-7747 or email me at jwatson@GWpatent.com

Intellectual Property Links: Patent, Trademark, and Copyright

 

By Jeff Watson

Jeff Watson is a patent attorney with 11+ years of experience.  He tracks the U.S. Patent and Trademark Office  and the Copyright Office for news.  Please find his most recent update below.

The United States Patent and Trademark Office (“USPTO”) had a Roundtable on Intellectual Property and Trade Shows.  The roundtable discussion was held on October 18, 2017 at the USPTO headquarters in Alexandria, Virginia and addressed IP infringements at trade shows.  Link

The United States Patent and Trademark Office (“USPTO”) issued the October 2017 Trademark Manual of Examining Procedure (“TMEP”).  The revision clarifies USPTO trademark policies and practices and includes relevant Trademark Trial and Appeal Board (“TTAB”) and court decisions before September 1, 2017.  Link.  View October 2017 TMEP Highlights.  For a complete list of changes, see the “Change Summary“.

The United States Copyright Office is proposing to create a new group registration option for a limited number of unpublished works.To qualify for this group option, all the works must be created by the same author or the same joint authors, and the author or joint authors must be named as the copyright claimant for each work. Link

The United States Patent and Trademark Office (“USPTO”) provided a Notice of Proposed Rulemaking in the Federal Register on October 18, 2017.  The USPTO proposes to amend the Rules of Practice in
Trademark Cases to remove the rules governing trademark interferences. This proposed rule implements the USPTO’s
work to identify and propose regulations for removal, modification,
and streamlining because they are outdated, unnecessary, ineffective,
costly, or unduly burdensome on the agency or the private sector.  Link.

The United States Patent and Trademark Office (“USPTO”) provided a practice tip that addresses when an examining attorney may presume that an applicant owns a conflicting prior registration or application, despite differences in the terminology used to identify the owner’s entity type in the respective records.  Link.

The United States Copyright Office proposed amendments to regulations governing the group registration of newspapers.  Link.

The United States Patent and Trademark Office (“USPTO”) finalized revised patent fee schedule.  Link.

The United States Patent and Trademark Office (“USPTO”) provided a notice that the Madrid Protocol has new voluntary mark description in international applications and subsequent designation forms.  Link.

The United States Patent and Trademark Office (“USPTO”) launches a two-year Diversion Pilot Program for patent and trademark practitioners that aligns USPTO with the practices of more than 30 state attorney discipline systems to help protect the public from practitioners who fail to comply with the USPTO’s standards for ethics and professionalism.  Link.

The United States Patent and Trademark Office (“USPTO”)provides notice of participatign in the signing of bilateral Memoranda of Cooperation with the Korean Intellectual Property Office (“KIPO”) and the Japan Patent Office (“JPO”) that is designed to provide the Examiner’s with the best prior art by combining the search expertise of examiners at the USPTO and JPO or KIPO before issuing an office action in the patent application.  Link.

The United States Copyright Office has initiated the seventh triennial rulemaking proceeding under the Digital Millenium Act (“DMCA”), which provides that the Librarian of Congress, upon the recommendation of the Register of Copyrights, may adopt temporary exemptions to the DMCA’s prohibition against circumvention of technological measures that control access to copyrighted works.  Link.

Call Jeff Watson for a Free patent consultation (704) 625-7747 or email me at jwatson@GWpatent.com

Intellectual Property Links: Copyright

By Jeff Watson

Jeff Watson is a patent attorney with 11+ years of experience.  He tracks the U.S. Patent and Trademark Office  and the Copyright Office for news.  Please find his most recent update below.

The United States Copyright Office has posted a final rule that makes a non-substantive technical change to the U.S. Copyright Office’s regulations governing the affixation and position of copyright notice on various types of works.  Read more here.

The United States Copyright Office published an archive of copyright office rulings and government briefs in copyright cases.  Link

The United States Copyright Office published a revision to seciton 108 with copyright exceptions for libraries and archives.  Link

Call Jeff Watson for a Free patent consultation (704) 625-7747 or email me at jwatson@GWpatent.com

Intellectual Property Links: Trademark and Copyright

By Jeff Watson

Jeff Watson is a patent attorney with 11+ years of experience.  He tracks the U.S. Patent and Trademark Office  and the Copyright Office for news.  Please find his most recent update below.

The USPTO amended its rules regarding petitions to revive an abandoned trademark application and petitions to the Director of the USPTO regarding other trademark matters and to codify USPTO practice regarding requests for reinstatement of abandoned trademark applications and cancelled or expired trademark registrations.  Read more here.

Link to the Trademark Exam Guide 02-17 on Merely Information Matter.

The United States Copyright Office is proposing to amend the regulations governing the deposit requirements for certain types of literary works and musical instruments.  Read more here.

The United States Copyright Office provided a proposed schedulde and analysis of copyright recordation fees to go into effect on or about December 18, 2017.  Link

Link to the Trademark Exam Guide 03-17 on Surname Combined with Wording.

Link to the Trademark Exam Guide 04-17 on Summary of “Revival of Abandoned Applications, Reinstatement of Abandoned Applications and Cancelled or Expired Registrations, and Petitions to the Director

Call Jeff Watson for a Free patent consultation (704) 625-7747 or email me at jwatson@GWpatent.com

The Patent Process

By Jeff Watson

Jeff Watson is a patent attorney with 11+ years of experience.  He tracks the U.S. Patent and Trademark Office  and the Copyright Office for news.  Please find his most recent update below.

 

Obtaining a patent is often a long and complicated process which generally requires the aid of a patent attorney or patent agent.  It is quite typical to take two years to obtain a patent, and for some types of inventions significantly longer (you are in ‘Patent Pending‘ status this whole time).  During this process, much of what is necessary is essentially a negotiation process with the United States Patent & Trademark Office (USPTO) to allow as much as possible of your invention.  This article will attempt to give a brief overview of that process and the parties involved.

A patent grants the inventor, an exclusive licensee or assignee of the patent, the exclusive right to prevent or exclude others from making, using, selling, offering to sell or importing the invention into the United States.  A patent attorney is an attorney at law admitted to the bar in at least one state and who is authorized to practice before the United States Patent and Trademark Office (USPTO) after passing an extensive examination.  A patent agent takes the same exam, but is not authorized to practice law outside of federal matters, as authorized by the USPTO, such as filing patent applications.  Generally an inventor will contact a patent attorney or patent agent to conduct a patent search.  Assuming there appear to be patentable features to the invention, a patent application will be drafted and filed with the USPTO.  Subsequently, a series of communications will be conducted back-and-forth between an Examiner at the USPTO and the inventor’s patent attorney or agent.  Following arguments by each, a patent will either be granted or denied.  Each of these steps will be discussed in greater detail below.

The Patent Search

Before filing a patent, it is highly recommended that an inventor request a patent search.  Patent searches are primarily conducted by patent attorneys, patent agents or professional patent searchers, but should only be interpreted by patent attorneys who are familiar with the law.  A patent search allows an inventor to determine if the invention is most likely patentable before committing the resources necessary to draft, file and prosecute a patent.

A patentability opinion is the application of law to facts disclosed in reference documents, such as patents and published patent applications, and more specifically the application of what is disclosed in these prior-art references as it pertains to the invention one wishes to patent.  Prior art can briefly be described as any information which has been made publicly available before the conception of the idea which relates to the invention.  More specifically, if the invention has been known or used by others in the United States, patented or described in a printed publication, including the Internet, anywhere in the world, then the invention is unlikely to be patentable.  Thus, a substantial amount of fact gathering is required for a patent search.

The Patentability Opinion

Once these facts are gathered and the patent search is complete, the next step is to interpret the facts and apply them to the invention.  The same group of patent documents can often be seen in many ways or construed differently by different persons, but a competent opinion as to the patentability of an invention will be provided by a qualified patent attorney.  The patentability opinion resulting from the patent search drafted by the patent attorney will tell an inventor what prior art exists and which aspects of the invention are most likely to be found patentable.  Upon finding patentable aspects of an invention, an inventor can better decide whether or not to dedicate the resources necessary to drafting a patent and filing it with the USPTO.

In preparing a patentability opinion from the patent search, a patent attorney is looking particularly for certain things.  First, if every element of the invention is disclosed (sometimes referred to as ‘taught’) by a patent or other publication, the new invention will not be considered to be novel, and thus, is not patentable.  Second, the patent attorney looks to see if each of the elements of the new invention can be found by looking in several references.  If a combination of two or more references discloses each and every element of the new invention, it may not be patentable.  The references must be from the same field of art; that is, references related to automotive devices would not likely be combinable with references related to clothing.  Further, there must be some reason  to combine the references, although the law is shifting as to this aspect.  Lastly, references that ‘teach away’ from the new invention, that is, that basically say that a portion of the new invention cannot be done or would not likely succeed, will not be combinable as to that portion.

The Patent Application

patent application is made up of the specification (written discussion), the claims and drawings of the different embodiments of the invention.  The claims are actually what describe the invention, but the specification and drawings provide the explanation of the invention so that the claims will have meaning.  The specification contains the background of the invention discussing what is previously known and what is lacking that makes the invention desirable or necessary, a summary of the new invention, and a detailed description of the new invention which sets forth through a description of the drawings, the embodiments of the inventions.  Both preferred and alternate embodiments (variations) may be found to describe different ways of making or using the invention.

The claims generally set out the scope of the invention and the scope of protection which will be afforded the invention.  The claims describe, in a very specific legal style, the essential and patentable features of the invention in a manner which clearly defines what would infringe on the patent.  Thus, the claims are the central part of an application, while the summary of the invention and the detailed description in accompaniment with the drawings are often easier to read, and describe the invention in its broader aspects and uses, thereby providing support to what is in the claims.  Once the specification and claims have been written and the drawings have been drafted, the completed patent is sent to the inventor for review.  After any necessary revisions or additions, and with the inventor’s final approval and signature of the declaration that they are the actual inventor(s), the application can then be filed with the USPTO.

At the United States Patent & Trademark Office

Once the patent application has been received by the USPTO with its accompanying forms, payment and information, confirmation is sent by the USPTO to the patent attorney or patent agent who represents the inventor.  The application will be reviewed by the USPTO’s Office of Initial Patent Examination (OIPE) to ensure that everything necessary is present and then the application will be scanned and entered into the USPTO’s electronic database.  Afterward, the application is assigned to a Group Art Unit at the USPTO (that is a group that deals with the type of invention submitted) where it will be further assigned to an Examiner, who works in the specific field or area of study.

The Examination

The Examiner will review the application and conduct a separate search of the relevant prior art to determine if she/he feels the invention is patentable, based primarily on whether it is novel and non-obvious.  The Examiner may find prior art which was not available during the patent search or other information pertaining to the invention.  Most of the time, the Examiner will find at least some aspects of the claims of the application which she/he does not feel is patentable and will send a Non-final Office Action to the inventor’s representative patent attorney or patent agent.

Restriction

Occasionally, the Examiner may consider the application to contain two or more different inventions.  In such a case, the Examiner will require the inventor to restrict to a single invention and continue the prosecution at the USPTO on that invention only.  However, the inventions that are not selected may be held in abeyance and subsequently prosecuted as their own separate applications to result in additional patents issued, so long as they are re-filed before the first patent issues.  An Examiner may also require restriction to a single species that is part of a larger genus.  In such a case, the Examiner is limiting the breadth of his/her search and examination to the single species and if it is found patentable, then the other non-selected species should also be patentable if they are linked through the genus.  For instance, if an invention was for a car with wheels and subsequent separate dependent claims were to cars with three wheels and cars with four wheels, the Examiner might require that either three or four be selected as the species.  It is also possible that an Examiner may require selection between species based on what is shown in the drawings.  In such case, the inventor, through his/her attorney will need to restrict to a single or group of drawings and identify the claims that relate to that single or group of drawings.

When a requirement for Restriction is received, a response must be made within one month to avoid paying surcharges.  Later responses may be made for five more months at increasingly heavy surcharges.  If no response is made within six months from the issuance of the Office Action, the patent application will go abandoned.

Non-final Office Actions

After the Non-final Office Action is received by the patent attorney, it will be analyzed to determine whether it appears that the Examiner’s view may be overcome through either amendment or argument or both, and a copy of the Office Action will be sent to inventor along with suggestions from the patent attorney or patent agent of how to proceed.  The patent attorney or patent agent may agree with the Examiner’s comments and suggest the claims be amended to comply with the Examiner’s suggestions, or there will be disagreement with the Examiner’s point of view.  If there is disagreement by the patent attorney over the patentability of the patent application, then a response to the Office Action will be sent to the USPTO which sets forth, on behalf of the inventor, the arguments for patentability.  Now the Examiner may either agree with the arguments of the patent attorney or patent agent and issue a Notice of Allowance granting the application, or she/he may still disagree and issue another Office Action.  The second and any subsequent Office Actions may be Non-final or the Office Action can be Final.  So long as the Examiner issues a Non-final Office Action and there is still a question to patentability, the patent attorney or patent agent and the Examiner may continue to discuss the reasons for or against patenting the invention.  The goal of the patent attorney or patent agent is to get the broadest protection for the inventor at this stage as possible and hopefully any disagreements will be resolved in favor of the inventor.  If so, then a Notice of Allowance will be issued and the patent will be granted.

As with the requirement for Restriction, a response must be made to the Non-final Office Action.  The time frame for the Non-final Office Action allows a response within three months without having to pay a surcharge.  A response must still be made within six months from issuance of the Office Action to avoid abandonment.

Final Office Actions

Eventually, if the Examiner continues to refuse to allow any claims and the Examiner considers the claims and arguments to have already been addressed in a prior Office Action, a Final Office Action may be issued.  As with the Non-final Office Action, a Final Office Action may be responded to within three months without surcharge or up to six months with surcharges.  After six months, the application will go abandoned if no response is made.  For the following reason, it is prudent to actually file a response within two months, rather than waiting three or more.

Advisory Action

For Final Office Actions, there is a special case.  If a response is made within two months, the Examiner will try to issue an Advisory Action commenting, or may allow the application based on the response.  It is important to respond to Final Office Actions within the two month timeframe because if the Examiner is still disallowing some or all claims in the Advisory Action, there is still time to take action without having to pay a surcharge if the action is taken before the end of the first three months.   Principally, the patent attorney or patent agent can continue to argue patentability through filing a Request for Continued Examination or through the Appeal process.  If the inventor no longer wishes to proceed, the application will go abandoned.

Note:  In certain circumstances for a short period of time, patent applications (or patents) that have gone abandoned may be resurrected.  A patent attorney should be consulted promptly if such has occurred to allow for a timely resurrection of the application or patent.

Issuance

Once claims have been allowed, the patent application can proceed to Issuance.  A Notice of Allowance will be issued along with a Notice of Allowability that may explain why the Examiner has allowed the claims.  The issue fee must be paid within three months (NO EXTENSIONS) or the application will go abandoned.  Once the issue fee is paid, the application will typically issue as a patent within about two to three months.

 

If you have any questions about this article, or are interested in obtaining a patent or having a patent search conducted, please feel free to contact Grell & Watson Patent Attorneys of Charlotte, North Carolina.  Alternatively, feel free to read other articles on similar subjects relating to both foreign and United States patent, trademark and copyright law.

For more information on the patent process, please visit Patent Information.

The content of this article is not intended to be, and does not constitute, legal advice and does not create attorney-client privilege. Consult the attorney of your choice before embarking on any legal matter or any document preparation/filing.

Call Jeff Watson for a Free patent consultation (704) 625-7747 or email me at jwatson@GWpatent.com

Intellectual Property Links : PCT Procedures and Updated TBMP

By Jeff Watson

Jeff Watson is a patent attorney with 11+ years of experience.  He tracks the U.S. Patent and Trademark Office  and the Copyright Office for news.  Please find his most recent update below.

July 2017 Revision of Patent Cooperation Treaty Procedures

June 2017 updated to Trademark Trial and Appeal Board Manual of Procedure (TBMP)

Call Jeff Watson for a Free patent consultation (704) 625-7747 or email me at jwatson@GWpatent.com

North Carolina’s Laws on Patent Trolls

By Jeff Watson

Jeff Watson is a patent attorney with 11+ years of experience.  He tracks the U.S. Patent and Trademark Office and the state of NC for IP related news.  Please find his most recent news link below:

North Carolina’s anti “patent troll” legislation has some interesting laws.

The following article in the North Carolina Bar Association blog by Daniel Walker Cole discusses this topic.

Beware Pitfalls in North Carolina’s Patent ‘Troll’ Law

The following is an exert from this article:

“Suppose you are a small company in California asserting a patent against a North Carolina-based company. You gathered finances, hired a lawyer, and filed a complaint. Now you are ready to start litigating your patent infringement case, but you receive a summons for violating NC 75 Article 8. This may seem utterly fantastical, but under North Carolina’s anti “patent troll” legislation it is not.

Next to issues surrounding 35 USC section 101, the supposed abusive litigation by “patent trolls” is one of the most discussed issues in patent law. North Carolina, along with several other states, has enacted laws aimed at curbing this practice. The law, however, suffers from several potential pitfalls. It gives North Carolina courts personal jurisdiction over anyone who sues a North Carolina based entity for patent infringement, even if the patent infringement suit takes place in another state. Lack of contacts, other than serving a North Carolina based entity, are irrelevant. Accordingly, a discussion on the likelihood of federal preemption follows.”

 

Call Jeff Watson for a Free patent consultation (704) 625-7747 or email me at jwatson@GWpatent.com

Design Patents for User Interfaces

By Jeff Watson

Jeff Watson is a patent attorney with 11+ years of experience.  He tracks the U.S. Patent and Trademark Office for news.  Please find his most recent news link below:

User interfaces is an emerging field with a lot of technologies and products, even more so in the design patent area of patent law.  In fact, the fastest growing segment of design patent filings is user interfaces.

The following article in The Crunch by Beth Ferrill, Lauren Dreyer, Erik Dreyer and John Sanchez discusses this topic.

Swipe to Patent: Design Patents In the Age of User Interfaces

The following is an exert from this article:

“User experience and user-interface design is an emerging field in the technology industry, even more so in the legal world of patents. (Sometimes this field is known by the shorthand UX/UI.) It might surprise you to know that the fastest growing segment of design patent filings is in the UX/UI space.

In the past, companies that manufactured a physical object, like a sneaker, often protected their designs with design patents. For a company like Nike, design-patent protection is important to preventing competitors from copying their shoe designs. But, the same is true for companies invested in UX/UI.

The surge in UX/UI design has created iconic features that cause consumers to immediately associate a design with a particular brand. From cell phones to remote controls, gaming devices to virtual reality headsets, modern products are carefully designed with the user in mind.

Because a product’s success often depends upon these creative design choices, protecting the design is critically important to differentiating your product from a competitor’s product.

Some of the top filers of UX/UI design patents include Samsung, Microsoft and Apple. With more and more innovation happening in non-traditional digital spaces, like wearables, smart watches and even home appliances, user interfaces and experiences are becoming a key segment of a company’s overall brand and should be considered part of their overall IP portfolio. This is true for established companies and startups.

Nonetheless, there remains some skepticism and misconceptions about design protection in the UX/UI area. We all sat down to talk about why design patents matter for UX/UI.”

 

Call Jeff Watson for a Free patent consultation (704) 625-7747 or email me at jwatson@GWpatent.com

THE REQUIREMENTS FOR OBTAINING A PATENT

The United States patent process works under a first to file system and thus an inventor who first files for a useful, new and non-obvious machine, manufacture, composition of matter or any new and useful improvement before others may obtain a patent.  However, there are very specific conditions under which a patent is granted.  The object of this article is to provide a brief explanation of those requirements, although contacting a patent attorney or patent agent for clarification is always recommended.

There are four substantive requirements for patentability: patentable subject matter, utility, novelty, and non-obviousness.  Patentable subject matter is almost always easily fulfilled if the invention is a machine, manufacture, composition of matter since patentable subject matter has been found to include practically everything man-made; however, there are some important exclusions.  Specifically, abstract ideas, laws of nature, mathematical formulas and physical phenomena cannot be patented.  While a mere concept of an idea itself cannot be patented without a reduction to practice, this does not mean an inventor must have an actual reduction to practice or a working prototype, but must only be required to describe his/her invention.  Laws of nature, mathematical formulas and physical phenomena cannot be patented because they are considered to inherently exist and thus cannot be invented.

The second requirement for patentability is utility and this is also generally easily satisfied.  The utility requirement ensures the patented invention will serve a useful purpose.  This has also been extended to include operativeness.  Thus if an invention will not operate to perform its intended purpose then it would not be useful.  However, utility and usefulness has been interpreted very broadly.  Thus, inventions for things such as games or other entertainment devices have been found to be useful and therefore patentable.

The third requirement of patent law is that the invention be new or novel.  Specifically, an invention cannot be patented if: “(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent,” or “(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States…”  35 U.S.C. §102  More generally speaking this means that if all of the features of your invention are found in a device used in this country, or disclosed in a patent or printed publication (including on the internet), then you may not obtain a patent because the invention already exists.  The majority of the time this is determined if a patent attorney, during a patent search, or an Examiner at the United States Patent and Trademark Office, during prosecution of the patent, finds a previously filed patent which discloses all of the features of your invention.   Additionally, if you have been marketing your invention and offering it for sale for more than a year, or have published its details such as in an advertisement or article or other publishing means, then it is no longer considered new and novel and thus is not patentable; however, small improvements in the invention which have not been offered for sale for more than a year may still be patentable.

The fourth requirement for obtaining a patent is referred to as non-obviousness and is generally viewed at the most difficult hurdle to overcome in getting a patent.  The test is whether a person of ordinary skill in the art or field of the patent as filed would find it obvious to solve the problem by using essentially the same means or mechanisms.  This is easily illustrated by a case in which a company attempted to patent peanut butter and jelly sandwiches with crimped edges instead of crust; they were awarded a patent, but subsequently, competitors complained and a reexamination was undertaken – during the reexamination, the patent was disallowed.  Since crimping is often used in creating ravioli to prevent the stuffing from falling out and ravioli and sandwiches are both food, and thus in the same field of art, it would have been obvious to apply the process of crimping from ravioli to sandwiches.  This situation most often arises when two or more issued patents or published patent applications contain all of the elements of the invention which is being filed (bearing in mind that if one invention contained all the limitations then it would relate to novelty).  For example, if your invention comprises parts A, B and C in a specific field, one source of prior art in the same field contains elements A and B, and a second source of prior art in the same field contains parts B and C, then an Examiner is likely to conclude that your invention is not patentable because it would be obvious it combine the first (A, B) and second (B, C) sources to arrive at your invention (A, B, C).

If your invention is patentable subject matter, useful, novel and non-obvious then you would be able to obtain a patent.  However, reasonable minds can often disagree over these terms, particularly what would be obvious to combine, and thus obtaining a legal opinion is always recommended.

When you obtain a patent, the United States government is effectively granting you a monopoly, since you have the right to prevent others from making, using, selling, offering for sale, or importing your invention into the United States.  In return for this grant of patent rights, which extend from the date of filing of your patent application for 20 years, you are required to fully disclose your invention such that anyone could make it from your description and drawings.  Further, you must disclose within your patent application the ‘best mode’ of making your invention; that is, at the time of the application what is known to you as the best and complete way of practicing (making or using) your invention.

If you have any questions about this article, or are interested in obtaining a patent or having a patent search conducted, please feel free to contact Grell & Watson Patent Attorneys of Charlotte, North Carolina.  Alternatively, feel free to read other articles on similar subjects relating to both foreign and United States patent, trademark and copyright law.

The content of this article is not intended to be, and does not constitute, legal advice and does not create attorney-client privilege. Consult the attorney of your choice before embarking on any legal matter or any document preparation/filing.

Jeffrey C. Watson is a Patent Attorney practicing in Charlotte, North Carolina.

Grell & Watson Patent Attorneys LLC
3911 Carmel Acres Dr.
Charlotte, NC 28226
704-625-7747
http://www.gwpatentattorney.com

Which should you choose: Provisional; or Utility (non-provisional)?

What They Are and Aren’t

Provisional

A provisional patent application is not a patent, and furthermore, never becomes a patent, with the single rare exception noted below. It automatically expires after twelve months following the day of filing and cannot be revived. It does provide a priority date for concurrent later-filed utility (non-provisional) applications for the content that is in the provisional. This means that references that could defeat the later-filed application as to the matter in the provisional (but which could not defeat the provisional filing date) will now not be utilized to defeat the later-filed application. Further, it does not subtract from the twenty year term of the later-filed application unless it is truly converted as discussed below. While patent attorneys often speak of “converting” a provisional into a non-provisional, this is not usually an accurate description of the case (with a single exception), since the provisional has no life beyond its twelve-month term and “converting” is usually done by filing a non-provisional application that claims benefit of the filing date of the provisional. Thus, the provisional is primarily a means for delaying the filing of a non-provisional patent application, while still getting benefit of the earlier filing date of the provisional. (The single exception as to “converting” is that a provisional patent application can be truly converted with an extra processing fee if it has a least one claim, or is amended to contain at least one claim, but this process is rarely done, since now the term of the resulting non-provisional will be twenty years from the date of the provisional filing, thereby losing a year.) A provisional patent application requires a full written specification and all the drawing figures, but does not require claims. It is never examined (unless truly converted) other than to ensure that the proper papers are present. Lastly, a provisional patent application never sees the light of day and remains confidential, unless a non-provisional patent application (or a Patent Cooperation Treaty application — to preserve foreign filing rights — or a design application) takes priority to it.

Utility (non-provisional)

A utility (non-provisional) patent application, sometimes called a “regular” patent application or just a “patent application”, is a “real” application for a patent. It will be examined, and ultimately, through the examination process can mature into a patent. It’s “term” or life ends twenty years from the earliest priority date, which may be the date it is filed or the date that an application from which it takes priority benefit is filed. (See above for the effect of a provisional priority date.) A complete non-provisional patent application contains at least a specification, all the drawing figures and at least one claim. Claims are the meats and bounds of the invention, or in other words the deed to the owner’s intellectual property. The specification and drawings must disclose what is in the claims, but they do not comprise the invention, only the claims do. Twenty claims are paid for with the filing fee, of which three may be independent claims. (Independent claims stand alone. The remaining are dependent claims which refer to another claim and thus cannot stand alone.) There are various types of non-provisional utility patent applications, including the “parent” application and such “children” as divisional patent applications (occasionally the USPTO examiner requires restriction between more than one invention in the patent application; after proceeding with one selected invention, the other or others can be filed as divisionals), continuation patent applications (typically only a new set of claims to the original invention) and continuation-in-part patent applications (the original patent application plus some new matter added — this is the only way to add new matter to a patent application).

Which Costs Less

Many people think that a provisional patent application is less costly way to get a patent than a non-provisional patent application. However, this is not the case. Again, because the provisional expires and a non-provisional must be filed to take priority to the provisional, this two-step process is more expensive in the long run. It is true that a provisional patent application is the least expensive way to get “Patent Pending” status, but that will expire after a year unless the non-provisional is filed within that time. Further, in order to be fully enabling and not just a waste of time and money, the provisional must contain everything that a non-provisional would include except the claims. That constitutes about ninety percent of the cost of a patent. Later, the non-provisional that is filed taking priority to the provisional will cost about twenty to thirty percent more. Thus, the provisional route is the more expensive route to obtaining a patent. Notwithstanding, as noted below, there are sometimes good reasons to file a provisional patent application and incur the additional costs.

How to Select

When to use a provisional

There are at least three good reasons to file a provisional patent application: 1. When an invention is fully definable, but will likely require further improvements that can be accomplished within a year, that is a good time to file a provisional patent application on the existing invention. The key is that the improvements must be completed within a year so that the non-provisional can be filed with the improvements during the pendency of the provisional so that priority as to the matter of the original invention defined in the provisional can be taken before the provisional expires. 2. On occasion, someone has an invention that they merely want to sell or license and are certain that they will have found someone to buy or license within the one-year pendency of the provisional patent application. Alternately, if they do not find someone, they plan to let the provisional patent application expire without filing a non-provisional patent application and incur no further expenses.  3.  On occasion, someone has an idea or invention that they want to present, like at a trade show, competition, sales pitch etc, where the date of the presentation is approaching quickly.  In this case, preparing and filing the informal provisional application quickly can get the inventor patent pending status in time for the presentation.  This would be an added expense in the long run, but would get patent pending protection in place quickly and allow the inventor to spend more time on utility (non-provisional) patent application that will be filed.

When to use a non-provisional

Pretty much any other reason than those three above will be a good reason for filing a non-provisional. Namely, if you want to get a patent and reason 1 above doesn’t apply, you should immediately file a non-provisional patent application and get the process going.

The content of this article is not intended to be, and does not constitute, legal advice and does not create attorney-client privilege. Consult the attorney of your choice before embarking on any legal matter or any document preparation/filing.

Jeff Watson is a Patent Attorney practicing in Charlotte, North Carolina.

Grell & Watson Patent Attorneys, LLC
3911 Carmel Acres Dr.
Charlotte, NC 28226
704-625-7747
http://www.gwpatentattorney.com
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