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Archive for the ‘Patent Preparation Errors’ Category

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Use of the PPH Increases the Likelihood of Allowance

The USPTO’s Patent Prosecution Highway (PPH) program is an effective way to expedite your patent application and increases your chances of allowance.  The PPH is a framework in which an application whose claims have been determined to be patentable in one country’s patent office is eligible to go through an accelerated examination in another country’s patent office. Under the PCT-PPH, patent applicants can request a fast-track examination procedure in participating offices where patent examiners can make use of the work products from other offices. Over the course of the past five months, the number of requests for PPH has increased by approximately 33%, and the number of requests for PCT-PPH has increased by almost 200%. The reason for this is the chances of allowance for cases prosecuted under the PPH significantly increases. If you have an opportunity to take advantage of PPH it is generally beneficial to do so.
More information about the PPH is available here: http://www.uspto.gov/patents/init_events/pph/index.jsp
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Patent Reform is Not Just a Bill Sitting on Capitol Hill

The Leahy-Smith America Invents Act (“American Invents Act”), H.R. 1249, will dramatically reform patent law.  Judicial Committee Chairman Lamar Smith brought to the floor a manager’s amendment to the bill which revised text approved by the Judicial Counsel.  The manager’s amendment was approved, resisting several floor amendments, which sought to strike amended language, including the first inventor to file provision.  On June 23, 2011 the bill passed in the House of Representatives by 304 to 117 (10 not present).

The America Invents Act replaces the current “first inventor to use” system with “first inventor to file,” a common system among most foreign countries.  It also modifies the earlier inventor to file defense to infringement by specifying that the subject matter must be reduced to a practice and commercially used at least one year before the effective filing date.  These are just to name a couple of the changes enactment of this bill will bring.  Congress expresses that the American Invents Act promotes international uniformity by harmonizing U.S. patent registration with that of other countries with whom the U.S. conducts trade.

Part I of the America Invents Act was amended to include technical edits and substantive changes including prior user rights; language to direct USPTO to develop methods for studying diversity of patent applicants; to add a sense of Congress that it is important to protect the rights of small businesses and inventors; to add requirements to the satellite office location selection process; to mandate a USPTO-led study on what USPTO, Small Business Administration, and other agencies can do to assist small businesses obtain, maintain, and enforce foreign patents; to restore language for calculation of 60-day period for application of patent term extension; and to prescribe a requirement that parties provide sufficient evidence to prove and rebut a claim of derivation.

For full text of Part I of the America Invents Act or a Summary prepared by the Congressional Research Service (CRS), a nonpartisan arm of the Library of Congress, please go to:

http://http/thomas.loc.gov/cgi-bin/bdquery/z?d112:h1249:

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Do I qualify for Small Entity Status?

A patent may be filed at the United States Patent and Trademark Office under small entity status.  Small entities only pay 50% percent of most Patent Office fees, including application filing fees, application size fee, excess claims fees, extension of time fees, revival fees, appeal fees, patent issue fees, statutory disclaimer fees and maintenance fees.

The following entities qualify for small entity status:

  • a small business concern as defined under section 3 of the Small Business Act (i.e. the number of employees, including affiliates, does not exceed 500 persons)
  • an independent inventor
  • a university or other institution of higher education located in any country
  • a non-profit organization as described in § 501(c)(3) of the Internal Revenue Code and exempt from taxation under § 501(a)
  • any nonprofit scientific or educational organization qualified under a nonprofit organization statute of a state of this country
  • any nonprofit organization located in a foreign country which would qualify as a nonprofit organization if it were located in this country

Additionally, to qualify for small entity status, no large entity can have rights in the invention.  Specifically, a small entity may not have “assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, concern, or organization which would not qualify for small entity status as a person, small business concern, or nonprofit organization.”

Because of the provisions regarding licensing to large entities, it is possible to qualify as a small entity for one invention but not another.  Failing to properly determine and/or notify the Patent Office of a change in status can result in the invalidity of your patent, leading to the loss of any patent rights.   Make sure you notify your patent lawyer of any relevant changes in your business and/or licensing agreements that may affect your entity status.   If you have any questions, feel free to contact a qualified patent attorney at Cotman IP in the Los Angeles area.

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How can I patent my idea in the U.S. in a hurry?

By filing a Request for Prioritized Examination, pursuant to new 37 CFR 1.102(e), which will be available May 4, 2011. The United States Patent and Trademark Office (USPTO) is revising the rules of practice in patent cases to implement a procedure under which applicants may request prioritized examination at the time of filing of an application, upon payment of appropriate fees and compliance with certain requirements.  The aggregate goal for processing applications under prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.  The fee for filing a request for prioritized examination is $4,000, in addition to filing fees for the application.

A request for prioritized examination may be submitted with any original utility or plant application filed on or after May 4, 2011.  Under a new 37 C.F.R. 1.102(e), the request for prioritized examination will not be granted unless:

  • the application is an original utility or plant nonprovisional application filed under 35 U.S.C. 111(a) that is complete as defined by § 1.51(b), with any fees due under § 1.16 (the filing fee, search fee, examination fee, any applicable excess claims fee, and any applicable application size fee) paid on filing;
  • the application is filed via the Office’s electronic filing system (EFS–Web) if it is a utility application;
  • the request for prioritized examination, including the prioritized examination fee set forth in § 1.17(c), the processing fee set forth in § 1.17(i), and the publication fee set forth in § 1.18(d) are present upon filing; and
  • the application contains or is amended to contain no more than four independent claims, no more than thirty total claims, and no multiple dependent claims.

Because plant applications may not be filed via EFS-Web, the USPTO will accept a request for prioritized examination in paper when it accompanies the filing of a plant application.

The USPTO is limiting requests for prioritized examination under § 1.102(e) to a maximum of 10,000 applications during the remainder of fiscal year 2011. The USPTO will revisit this limit at the end of fiscal year 2011.

Time is of the essence.  So, make prioritized examination a priority and contact your patent attorney at your earliest opportunity.  We are located just outside of Downtown Los Angeles in the City of Pasadena.

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Provisional Applications and the Disclosure Date of New Matter

An applicant must file a patent application within a year of any of the following events:

  • obtaining a patent for the invention in a foreign country
  • disclosure in a printed publication
  • public use of the invention
  • an offer to sell the invention in the United States

A ‘printed publication’ has been broadly interpreted as including any disclosure made available to the public, including advertisements, documents accessible by the interested public on the Internet, documents indexed in a university library, poster presentations, abstracts, and even written or oral disclosures made without an express statement regarding confidentiality.

After a Provisional Application is filed, public disclosures of the subject matter contained therein will not affect the patentability of an invention claimed in a Utility Application claiming the benefit of the Provisional Application.  However, one must use caution regarding new matter, or information that has already been disclosed but was not included in the Provisional Application. 

Consider the following timeline:

1/1/2010:             public disclosure of elements A, B, C, D of an invention

10/1/2010:          public disclosure of new feature, element E

1/1/2011:             filing of Provisional Application covering A, B, C, D

10/1/2011:          public disclosure of new feature, element F

1/1/2012:             filing of Utility Application covering A, B, C, D, E, F

In this case, the applicant will be barred from claiming element E because it was disclosed more than one year prior to the filing of the Utility Application; element E was not included in the Provisional Application. 

The applicant will be able to claim element F.  The one-year bar of publicly disclosed matter will not apply before the one-year deadline to file the Utility Application.  However, the priority date for claims including element F will be 1/1/2012 rather than 1/1/2011 because element F is not included in the Provisional Application.  This means that prior art dated after the filing of the Provisional Application will be usable against these claims.

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Should I file a Provisional Application?

A Provisional Application is a type of patent application filed with the U.S. Patent and Trademark Office (USPTO).  The primary purpose of a Provisional Application is to obtain a filing date for the disclosure of an invention.  Upon filing, the inventor has one year to file a Utility Application.  A Provisional Application has a low filing fee and allows an applicant to quickly obtain a filing date with minimal preparation.  Furthermore, the one-year period for filing a Utility Application that claims benefit of the Provisional Application does not reduce the 20 year term of the Utility Application.

A Provisional Application is useful when there is insufficient time to prepare a full application, such as before an anticipated disclosure (e.g. publication or sale).  A Provisional Application also defers the cost of filing a full Utility Application for up to one year, allowing the applicant extra time to evaluate the market or obtain financing.

On the other hand, a Provisional Application will increase the total cost of obtaining a patent.  Furthermore, the USPTO will process the Utility Application based on the filing date of the Utility Application rather than the Provisional Application filing date.  This increases the total delay before any patent issues.  A Provisional Application will not be examined.  The Provisional Application becomes abandoned after one year.

If you choose to file a Provisional Application first, it is critical that the Provisional Application is enabling: the application must disclose enough information such that a person of ordinary skill in the art to make and use the invention.  Furthermore, you must keep in mind that new matter not included in the Provisional Application is not entitled to the filing date of the Provisional Application.

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Preserving Your International Patent Rights Via the PCT

If you want to obtain a patent in a country other than the United States there are several paths you can take to achieve this goal. They are as follows:

  1. You can file directly in the country of choice
  2. You can file a PCT application and then later designate your countries of choice so long as that country is a PCT member
  3. You can file a utility patent application in the U.S. and within 12 months from filing do either items 1 and/or 2

Each of these options has pros and cons which need to be carefully considered. The most important consideration is timing. Failing to take whatever steps are needed within the time frames required to preserve your international filing rights causes these rights to be irretrievably lost. If a patent application is already pending in a PCT member country (of which the US is one), you must file the PCT application within one year from the filing date of the priority application. The PCT is often favored as an avenue for preserving international filing rights because it enables applications to wait up to 30 months from the initial priority date dates before a decision must be made about what countries to seek patent protection in.  The timeline below illustrates how the PCT process works.

The advantages of the PCT are that it:

1. Enables the applicant to delay the expense of filing international patent applications

2. Provides an examination process that enables the applicant to assess the likely patentability of the idea before further examination costs are incurred.

3. Provides the applicant with a way to amend and modify the application to put it in good form for examination before any examination occurs

4. Most countries of interest are PCT members so by filing a PCT application you preserve rights in numerous countries for at least 30 months and longer if you then go through the examination process in that country.

There are many nuances that go into an international filing decision and if you are considering how to protect your invention internationally you should get in touch with a qualified patent attorney.

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Restriction Requirement compared to Election of Species

An Examiner may issue a restriction requirement and/or require an election of species. The Examiner typically does so at the beginning of prosecution before evaluating patentability.  One reason is that both restriction and election of species reduce the initial search performed by the Examiner. It is important to understand the difference between a restriction and an election of species.

If the Examiner believes that more than one patently distinct invention is claimed, the Examiner can issue a restriction requirement. To respond to a restriction requirement, one invention must be elected. The election of the invention may be done with traverse (arguing that the restriction is improper). The other claims will be withdrawn from consideration.

The Examiner may also require an election of species when multiple variations of an invention are claimed. The claims may include one or more generic claims. The generic claim encompasses all variations. For example, a generic claim may be recite an incandescent lightbulb with a filament, while the species may include incandescent lightbulbs with a bamboo filament, a carbon filament, and a tungsten filament. To respond, the Applicant must elect one species.  The Examiner will begin by searching for the elected species. If the elected species is allowable, the generic claims will be prosecuted. If a generic claim is allowed, the Applicant is entitled to consideration of claims to additional species that are dependent on the generic claim.

The Applicant may pursue withdrawn claims in a divisional application. Other inventions disclosed in the application may also be pursued in a continuing application as long as the original application is pending.

Restriction practice and continuation practice involve complex issues. Your patent attorney can help you understand and address these issues to help you maximize patent coverage. Cotman IP has experienced patent attorneys located in the Los Angeles area.

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Unclaimed Subject Matter

A patent specification includes a set of claims.  The claims define the scope of protection that is sought.  The specification also includes unclaimed subject matter described in other sections of the application.  There are several key concepts to remember regarding unclaimed subject matter.

First, unclaimed subject matter is still prior art.  For a later applicant, this means that unclaimed subject matter described in an earlier application may be relevant to patentability.  For a patentee, this means that other parties, including competitors, cannot obtain patent protection for inventions that are anticipated or obvious in view of the unclaimed subject matter.

Second, unclaimed subject matter may be pursued in a continuing patent application as long as the first application is still pending.  Continuing patent applications include continuation applications, divisional applications, and continuation-in-part (CIP) applications.  This means that after allowance, unclaimed subject matter should be evaluated to determine if additional patent coverage is desired.  A published patent application should also be similarly evaluated before abandoning the application.

After a patent is granted, unclaimed subject matter belongs to the public domain.  Subject matter in the public domain cannot be patented by any party.

Hypothetical: A is granted a patent.  The patent specification describes an incadescent lightbulb with a carbon filament or a tungsten filament.  Only the carbon filament is claimed.  No continuing application is filed.

Ex. 1: Applicant B attempts to obtain a patent on a lightbulb with a tungsten filament to prevent A from producing tungsten filament light bulbs.  The Patent Office rejects B’s application, citing A’s patent.

Ex. 2: Applicant C attempts to obtain a patent on a lightbulb with a molybdenum filament.  The Patent Office argues that C’s invention is obvious, citing A’s patent and another reference that states that molybdenum is often used as a substitute for tungsten.  C must now present arguments that the substitution was not obvious.

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Your duty of disclosure

You have a duty to inform the U.S. Patent and Trademark Office of any information you are aware of that is material to the patentability of your invention.   The duty exists for each pending claim as long as the patent application is still pending.  This includes information you discover during the entire application process.  Although there is no duty to search for prior art, it applies to information you and/or your patent attorney are aware of.

A failure to abide by your duty of disclosure may result in the patent being found invalid.  Furthermore, if inequitable conduct is found regarding the non-disclosure of a reference, the patent and related patents may be found unenforceable.  Furthermore, inequitable conduct may be a basis for awarding the accused infringer attorney fees in litigation.  Inequitable conduct involves a misrepresentation, failed to disclose material information, or submittal of false information to the U.S. Patent and Trademark Office with an intent to deceive the U.S. Patent and Trademark Office.

 Information may be material if it relates to your invention and:

  • appears in publications, trade journals, issued patents, data sheets or brochures
  • is publicly available or publicly known
  • shows use of your invention in public, either by you or by another
  • shows the making of a similar or an identical invention, either by you or by another
  • shows a sale of your invention or an offer to sell your invention

37 C.F.R. § 1.56 details your duty of disclosure.  The duty is typically fulfilled by submitting an Information Disclosure Statement.  Your patent attorney can analyze any documents and other information you are aware of to determine whether a disclosure is necessary.

When you properly disclose a reference and the reference is considered by the Examiner, there is a presumption of validity of your patent over the reference if the validity of your patent is challenged in court.  This means that, because the Examiner was aware of the reference during his decision to grant the patent, the opposing party must show with clear and convincing evidence that the reference invalidates the patent.

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