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Category: Patent (page 1 of 2)

Filing Design and Provisional Patent Applications

Timing of Filing Design and Provisional Patent Applications

Grell & Watson tracks the U.S. Patent and Trademark Office  procedure and the Copyright Office .  Please find their most recent update below.

Filing Design and Provisional Patent ApplicationsInventors wishing to file utility patents often secure a priority date by first filing Provisional Patent Applications. These applications focus squarely on what the inventor has documented, and don’t require some of the formalities of a Non-Provisional Patent Application. Since Provisional Patent applications aren’t examined, this means an inventor can file an application and receive a priority date for their patent without the need for a patent claim, an oath or declaration, an Information Disclosure Statement (IDS), and other formal application requirements. As long as the inventor files a Non-Provisional Patent Application within 1 year of their Provisional filing, swearing priority to the Provisional Patent Application, intervening publications cannot be cited as prior art against the inventor’s application.

Under 35 U.S.C. § 172, however, only Non-Provisional utility patent applications may swear priority to an earlier filed Provisional Patent application. Therefore, if ornamental design is a prominent feature of an invention, the provisional filing date may not be used as a placeholder for priority. So, if both useful features and ornamental design aspects of an invention are important to the overall marketing and proprietary features of it, inventors should consider filing a design patent application in addition to filing a Provisional Patent Application. This can be done either simultaneously or by filing a design application soon after the filing of a Provisional Patent Application. That way, the ornamental features can receive a level of patent protection and share its priority date with respect to products sold or publications by others when it comes time for the USPTO to examine each application. Otherwise, products released or publications by others, and even the inventor’s own publications or sales, may become novelty defeating prior art against the inventor’s design application and the inventor may risk not being able to protect their ornamental features.

If you have a useful invention that also features a unique ornamental design, it’s important to keep these special design patent rules in mind. Since you’ll need to prepare important documents and critical dates are crucial to turning your application into a patent, you should consider hiring a patent attorney.

One other consideration must be taken into account in regard to foreign applicants wishing to protect their ornamental designs within the US. Under the same section of patent law, 35 U.S.C. § 172, foreign applicants claiming priority in a US Design Patent Application to a foreign application, must file their application within six-months of filing their foreign application for the same design in order to use their foreign priority date in their US application. This shortened time period for international applicants means they should take special care regarding these deadlines if ornamental features are being protected.

If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.

Filing Design and Provisional Patent Applications

Call for a Free Consultation with a Patent Attorney or Trademark Attorney.

By Richard Piercy

IP Lawyers:

Ext. 104 – Atlanta I-75 & Downtown – (404) 596-7333

Abandoned Patent Applications

Abandoned Patent Applications

Grell & Watson tracks the U.S. Patent and Trademark Office  and the Copyright Office for news.  Please find their most recent update below.

Patent Abandonment

Abandoned Patent ApplicationsPatent application abandonment or patent abandonment means that a patent application is no longer pending or a patent is no longer valid, respectively. In the case of issued U.S. patents, this can occur due to failure to pay patent maintenance fees or when a patent owner expressly abandons his or her patent with a written declaration of abandonment. For U.S. patent applications, this generally occurs when, during the pendency of an application, an applicant fails to reply within six (6) months of the mail date of an Office Action from the USPTO patent examiner. Other circumstances of application abandonment include, but are not limited to, failure to pay issue fees after allowance and incomplete replies by applicants who then fail to cure the deficiencies within specified timeframes. Express or written abandonment is also possible, though it is generally reserved for cases where an applicant wishes to prevent the application’s publication.

Sometimes inventors become too busy, life gets in the way, or prosecuting their patent becomes overwhelmingly complicated. If they delay too long in responding to USPTO correspondence, they may unintentionally abandon their application and their invention can enter the public domain. In this article, we cover how abandonment might happen and steps you can take to get your application back on track.

Petitioning to Revive an Abandoned Patent Application – After Two Months

If the holding of abandonment is not being disputed, an abandoned U.S. patent application may be revived only on the basis of unintentional delay. If the delay in reply by applicant was unintentional or unavoidable, a petition to the Director may be filed to revive the application. Under 37 C.F.R. 1.137, the petition requires (i) the reply required to the outstanding Office Action; (ii) the petition fee of $850 for a small entity; (iii) a terminal disclaimer and corresponding fee of $160; and (iv) a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable petition pursuant to this section was unintentional. In the case of failing to reply to a Non-Final Office Action, the applicant may file a continuation application which swears priority to the abandoned application instead of its reply to the outstanding Office Action with a continuation application swearing priority to the initial application, in place of (i) the reply required.

While these are the only requirements for filing the petition, the Director of the USPTO may require additional information when there is a question as to whether the entire delay was unintentional. This determination is at the sole discretion of the Director. Should the Director require this additional information, the applicant must then carry the burden of proof to establish that the delay from the due date for the reply until the filing of a grantable petition was unintentional.

This may mean providing reasons, circumstances or excuses for failing to respond along with sufficient written or testamentary evidence corroborating them. Examples might include failure to receive an Office Action and/or a Notice of Abandonment due to change in address or lost mail, failure of an applicant’s representative to communicate the same, the applicant’s physical or mental incapacitation during the period of delay, death of the applicant or a close family relation, or confusion as to the sufficiency of the applicant’s response or the status of its application. Examples do not include the applicant deciding that responding would be too complicated or expensive or otherwise not worthwhile but later changing their mind.

Petitioning to Withdraw the Holding of Abandonment – Within Two Months

In cases where the applicant disputes the USPTO’s determination that the application was abandoned, he or she may petition to withdraw the holding of abandonment. The reasons for petitioning to withdraw the holding of abandonment include (i) non-receipt of USPTO correspondence by an applicant or its representative; (ii) argument that an incomplete response was substantially complete; or (iii) evidence that a reply was timely mailed or filed. In any of these scenarios, 37 C.F.R. 1.181(f) provides that any petition not filed within two (2) months of the Notice of Abandonment may be dismissed as untimely. Therefore, applicants that have been recently notified that their applications have been abandoned, must move quickly to petition the USPTO to withdraw the holding of abandonment.

If you have received a notice of abandonment but still wish to receive a patent for your invention, it may not be too late to fix your mistake. Since you’ll need to prepare important documents and critical dates and evidence are crucial to continuing your application, it may be time to hire a patent attorney. If you’d like our help or have any questions before filing, please call Grell & Watson Patent Attorneys for a free consultation.

Abandoned Patent Applications

Call for a Free Consultation with a Patent Attorney or Trademark Attorney.

By Richard Piercy

IP Lawyers:

Ext. 104 – Atlanta I-75 & Downtown – (404) 596-7333

When is my Provisional Deadline?

When is my Provisional Deadline? US patent law allows inventors to file informal, or Provisional, patent applications. These applications consist largely of the inventor’s invention disclosure, without the requirement to conform to the complex and elaborate requirements of the standard, or Non-Provisional, patent application. This allows inventors a low-cost way to receive a priority date for their application and begin marketing their invention as “patent pending” upon filing. However, this application is never examined by the USPTO and may never become a patent unless the corresponding formal Non-Provisional patent application is filed within 1-year of the Provisional patent application filing. This date is sometimes referred to as the “Provisional Deadline.” While this date generally falls 365 days after the Provisional patent application’s filing date, some instances afford inventors one or more extra days to file.

provisional deadline
Provisional Deadline

Leap Year

Since there is an extra day in February every 4 years, inventors are incidentally afforded an extra day. This is because the Provisional Deadline falls on the same calendar day, not 365 days, from the date the Provisional patent application was filed. Though most may not even notice this extra day, applicants who filed in early March the year before a leap year may enjoy that extra day to review, finalize and file their Non-Provisional patent application.

If you’re considering filing a Provisional patent application, or are quickly approaching your Provisional Deadline, it’s never too late to hire a patent attorney to help draft and file your application. Patent attorneys can docket your application, keeping in mind all relevant deadlines, to remind you with plenty of time to make sure you don’t inadvertently abandon your invention. Please contact Grell & Watson Patent Attorneys for a free consultation.

Weekends and Federal Holidays

Nowadays, nearly all US patent applications are filed electronically online, and not filed on physical paper or fax. Absent outages and maintenance, the USPTO’s online filing system is generally open 24 hours a day and 365 days a year. Nonetheless, the USPTO affords extra time to inventors when their filing deadline falls on a weekend or federal holiday, when their office is not open. So, if the filing deadline falls on a Saturday or Sunday, the Non-Provisional patent application may be filed on the following Monday, while maintaining its priority to the Provisional patent application. If the following Monday or the filing deadline is a federal holiday, the inventor may file the Non-Provisional patent application the next business day. For example, if an inventor had filed her Provisional patent application on February 15, 2019, her Provisional Deadline would actually fall on February 18, 2020 because the 15th is a Saturday and the 17th is President’s Day. This would afford an inventor an extra 3 days to finalize and file her Non-Provisional patent application.

Please contact a US Patent Attorney at Grell & Watson

Richard Piercy
(404) 596-7333
Email

We would be happy to discuss your potential US Provisional Patent application and answer any patent questions.

CLE – Functional Claiming for Software Patents: Leveraging Recent Court Treatment

This CLE webinar will provide guidance to IP counsel on functional claiming in software patent applications and in USPTO patent application prosecution. The panel will examine recent court treatment and how to navigate the issue of functionality given the uncertainties in the prosecution and litigation contexts.

Description

In Williamson v. Citrix Online, the Federal Circuit issued a decision relating to means-plus-function claims. This decision is having a dramatic impact on interpreting functional claim terms, regardless of whether claim language is being construed in prosecution, post-grant challenges in patent applications at the PTAB, or district court litigation.

Since Williamson, patentees must meet a heightened standard of review by sufficiently disclosing the functional basis for software. It is not enough to claim a general purpose computer as the structure performing the function. Rather, the patentee must disclose the technical algorithm that performs the stated function.

Listen as our authoritative panel of patent attorneys provides a quick review of the Williamson decision, discusses how the courts have applied the Williamson decision, and then examines functional claiming in the context of software patents. The panel will examine the benefits and risks involved with using functional claims and offer best practices for surviving §112(f) and leveraging functional claims to maximize patent protection.

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CLE Trade Secrets and Patents

Trade Secrets and Patents: A Comprehensive Approach to Protecting Intellectual Property

Patents and trade secrets provide two ways of protecting inventions and technology other than a patent application. The AIA changed the playing field and disclosure requirements. Those who commercially use an invention one year before the patent was filed now have a defense to infringement claims.

Also, there is a federal cause of action for trade secret misappropriation under the Defend Trade Secrets Act (DTSA) that became effective on May 11, 2016.

Patent Attorney must understand the pros and cons of each mode of protection to guide their clients in choosing between protecting inventions as a trade secret, filing for a patent (patent application), or utilizing a strategy of both patent search, trade secret and patent application for an invention. Continue reading

CLE Demonstrating Patent Eligibility Post-Alice

Demonstrating Patent Eligibility Post-Alice

The Federal Circuit and other federal courts, as well as the PTAB, are issuing rulings regarding patent eligibility based on and after the Supreme Court’s decision in Alice Corp. v. CLS Bank (2014). These opinions provide guidance on the application of Alice Corp., in which the Court concluded the claims were not patent eligible because they were drawn to a patent-ineligible abstract idea.

The Federal Circuit recently gave additional guidance on the first prong of the two-part test established in Alice Corp. In McRo Inc. v. Bandai Namco Games America Inc. (Fed. Cir. Sept. 2016), the Federal Circuit provides some clarity on the issue of preemption and its importance in the §101 analysis. Continue reading

CLE Demonstrating Patent Eligibility Post-Alice

Navigating the Nuances and Leveraging Guidance From Federal Circuit and PTAB Opinion

This CLE webinar will examine recent decisions applying the Supreme Court’s decision in Alice Corp. v. CLS Bank on patent eligibility. The panel will discuss the guidance from these opinions and offer best practices for addressing patent eligibility issues.

Description

The Federal Circuit and other federal courts, as well as the PTAB, are issuing rulings regarding patent eligibility based on and after the Supreme Court’s decision in Alice Corp. v. CLS Bank (2014). These opinions provide guidance on the application of Alice Corp., in which the Court concluded the claims were not patent eligible because they were drawn to a patent-ineligible abstract idea.

The Federal Circuit recently gave additional guidance on the first prong of the two-part test established in Alice Corp. In McRo Inc. v. Bandai Namco Games America Inc. (Fed. Cir. Sept. 2016), the Federal Circuit provides some clarity on the issue of preemption and its importance in the §101 analysis.

Patent counsel should take note of these and other instructive opinions that provide insight into how §101 is being applied to determine patent eligibility.

Listen as our authoritative panel of patent attorneys discusses the cases handed down by the Federal Circuit, PTAB and various district courts since the Supreme Court’s decision in Alice Corp. and examines the guidance these cases provide for patent counsel regarding patent eligibility. The panel will offer best practices going forward for demonstrating patent eligibility.

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CLE Leveraging USPTO Examiner Count System: Efficiently Prosecuting Patents, Lowering Prosecution Costs.

I am pleased to announce that I recently participated in a Strafford webinar, “Leveraging USPTO Examiner Count System: Efficiently Prosecuting Patents, Lowering Prosecution Costs.” Due to overwhelming popularity, we scheduled an encore presentation with live Q&A for Tuesday, November 15, 1:00pm-3:00pm EST.

The United States Patent & Trademark Office (USPTO) uses a production-based system made up of “counts” to manage the workload of patent examiners. Examiners accrue counts by completing different tasks in the examination process.

For example, the type of action and the timing of those actions are factors in determining an examiner’s “counts.” Since examiners are expected to meet their quotas for production, certain times of the year practitioners often see an increase in examiner activity, i.e., at the end of each quarter. Understanding the USPTO’s inner workings allow patent practitioners to efficiently prosecute patents.

Our panel will provide guidance on leveraging the USPTO Examiner Count System to prosecute patents more effectively. The panel will provide insight into the count system and offer strategies for interacting with patent examiners.

We will review these and other key issues:

  • What impact will the number of claims in the application have on the quality of examination in the first office action?
  • How can patent counsel use the incentives of the count system to the client’s advantage?
  • How and when should patent counsel interact with examiners for effective and efficient prosecution?

Who owns the invention Employer or Employee

Employer vs. Employee?

It’s not a simple answer and depends on a number of factors and state law not fully disclosed herein.  A) Was the employee “hired to invent” something or to solve a particular problem? Then the Company may likely own the invention. B) Did the employee use the resources of company to invent or invent during hours of employment?  Does the invention relate to the business of the company?  Then the Company may likely own the invention. Was there an express employment contract covering this issue?

With no express employment contract requiring the employee to assign , and A) or B)  above the Company may claim at least a “shop right” – a non-exclusive license to use the invention (related to company business) within the normal scope of company business.

If not A) or B) then employee may own the invention.

Provisional Patent Application: Preserving IP Rights in Atlanta GA

Provisional Patent Application: Preserving IP Rights in Atlanta GA

Provisional Patent Application Description

provisional patent applicationUnder the first-to-file patent system, a patent claimant should file a patent application as soon as possible. Provisional patent application will establish priority and meet the need to act quickly under the new system. A provisional application can also give an additional year of patent protection.

Patent counsel must understand and weigh the benefits and limitations of the provisional application before filing. The application lays the foundation for procuring a patent, avoids statutory bars, and preserves absolute novelty for foreign filings. However, it also may result in the loss of trade secrets and delay in patent issuance.

How far should patent counsel go to ensure that non-provisional applications obtain priority back to provisional applications? Non-provisional applications will not receive priority over inadequate provisional applications. However, once an inadequate provisional application has been filed, there is no way to restore priority back to the filing date of the inadequate provisional application.

Listen as our panel discusses the benefits and limitations of provisional patent applications as well as when and why to use provisional patent applications. The panel will examine the issue of priority and tying non-provisional applications to the provisional patent application and offer best practices for leveraging provisional applications.

Provisional Patent Application Outline

  1. Benefits and limitations of provisional applications
  2. When and why to use provisional patent applications
  3. Priority—non-provisional applications to provisional applications
  4. Best practices for leveraging provisional patent applications

Provisional Patent Applications Benefits

The panel will review these and other key issues:

  • Under what circumstances will a patent claimant get the most out of a provisional patent?
  • What are the benefits and limitations of using a provisional patent application?
  • What are the important considerations when determining whether and when to use a provisional application?

Thursday, October 29, 2015
1:00pm-2:30pm EDT, 10:00am-11:30am PDT

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