Kenneth Pearce, Author at Business Patent Law, PLLC

Deadlines and timing of trademarks and service marks

Duration of a US Trademark Registration

November 13, 2023November 13, 2023Kenneth Pearce

The duration of a US Trademark or Service Mark is perpetual; provided the following conditions are met:

The United States Patent and Trademark Office (USPTO) granted a federal Registration of the Trademark or Service Mark
After registration, the Trademark/Service Mark is not canceled by the USPTO or court order
The required government fees are paid in timely manner
The required declarations of use are timely filed in USPTO
The required evidence of use in commerce regulated by Congress is timely filed in the USPTO

Timing Required to Maintain a Trademark

There is a specific timing of Required Fees, Declarations and Evidence needed to Maintain a US Trademark/Service Mark Registration in full force and effect:

15 U.S.C. §1058. Duration, affidavits and fees

(a) Time periods for required affidavits

Each registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:

(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this chapter or the date of the publication under section 1062(c) of this title.

(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registration.

(3) The owner may file the affidavit required under this section within the 6-month grace period immediately following the expiration of the periods established in paragraphs (1) and (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.

Illustrations of Timely Filings

To preserve the duration of a US Trademark Registration you must do the following:

Between fifth and sixth year subsequent to registration, file required fees, declarations and evidence of use in USPTO
Between ninth and tenth year subsequent to registration, file required fees, declarations and evidence of use in USPTO
Between nineteenth and twentieth year subsequent to registration, file required fees, declarations and evidence of use in USPTO
***Subsequent to the ninth year USPTO filings, every tenth year interval, i.e, 19, 29^th, 39^th, etc. from the registration date

If your company needs assistance with its Trademarks/Service Marks, please contact Business Patent Law, PLLC.

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If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and you have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Patent drawings for patent application and replacement drawings after notice of allowance

Replacement Drawings Subsequent to the Notice of Allowance?

October 9, 2023October 9, 2023Kenneth Pearce

Can the USPTO Require Replacement Drawings Subsequent to the Notice of Allowance?

YES.

Some Applicants for US Patents represent themselves and, on occasion, the pro se Applicant successfully argues to the Examiner that the Application’s claims are patentable.

Other Applicants are represented by patent professionals and (due to various national and international deadlines) a complete but not pristine Patent Application that obtains a filing date is filed in the USPTO.

For some Patent Applications, Examiners issue a Notice of Allowance where the Issue Fee must be paid by a specified date. After the Examiner’s issues the Notice of Allowance, the Application is transferred to the Publications Branch of the USPTO. It is here that a replacement drawing may be required.

Code of Federal Regulations for Utility Patent Application Drawings

37 Code Federal Regulations 1.84 (a) (1), in part, reads, “37 C.F.R. 1.84 Standards for drawings. (1) Black ink. Black and white drawings are normally required. India ink, or its equivalent that secures solid black lines, must be used for drawings”.

After receiving the allowed Patent Application from the Examiner, the Publications Branch can require correction of a part of the Application, such as the Drawings. For instance, when Applicants have not filed the required black and white line drawings in the as-filed Application, but rather used photographs or non-line computer generated images to obtain a filing date.

Most of the time, the drawings are replaced before the Notice of Allowance is granted. However, occasionally, the black and white line drawings are required after the Notice of Allowance and before the grant of the Patent.

Replacement Drawings for Utility Patent Applications

A part of the Notice for Corrected Application Papers looks something like the example below.

In the Notice to File Correction Application Papers, the Publication Branch of the USPTO requires replacement black and white line drawings before the Patent Application will be granted. One or more as-filed figures need to be replaced by black and white line drawings.

To properly respond to the Notice to File Correction Application Papers – Drawings, the Applicant must file the required black and white line drawings within the allotted time identified on the Notice to File Correction Application Papers.

Ask Us Anything… about Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Is An Abandoned Patent Application Public?

September 5, 2023September 5, 2023Kenneth Pearce

How Does a Patent Application Become Abandoned?

An abandoned Patent Application occurs when the Applicant does not meet United States Patent Office’s (USPTO) requirements in responding to the USPTO.

Are They Public Record?

Does an abandoned US Patent become public record when it is abandoned? It depends! For national security reasons, some Patents are kept top secret.

With the exception of top secret Patents, when a US Patent is granted the contents of the granted Patent’s USPTO file wrapper become public record.

As a general rule:

When a US Patent Application is abandoned, the USPTO file wrapper for the US Patent Application does not become public record.
A US Provisional Patent Application does not become public record.

Existing Patent Applications Available to the Public Include:

Published Patent Applications
Reissue Patent Applications
Documents that were sealed as a condition of filing the Patent Application
Arbitration records associated with a Patent Trademark Trial and Appeal Board proceeding
All documents and evidence entered in a US Patent’s Reexamination Proceedings’ records

Abandoned Patent Applications Available to the Public

Unpublished abandoned applications (including provisional applications) that are identified or relied upon
Unpublished pending applications (including provisional applications) whose benefit is claimed
Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise identified

USPTO Legal Authority Regarding Public Records of Patent Applications

37 Code of Federal Regulations Section 1.11

37 Code of Federal Regulations Section 1.14

Ask Us Anything… About Intellectual Property!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Trade Secrets - What are they and how do you protect them

What Are Trade Secrets?

August 4, 2023August 4, 2023Kenneth Pearce

Trade Secrets

Trade Secrets are a type of intellectual property that can be of great value to the owner over a period of years. For something to be a Trade Secret, it must be kept secret. Public disclosure of a Trade Secret destroys the value of the Trade Secret.

Depending on the circumstances associated with the Trade Secret, federal (18 U.S.C 1831-1839), State or common law may determine the rights of the owner of the Trade Secret. 18 U.S.C 1831-1839, for instance, has both criminal and civil provisions.

Forty-eight of the 50 States have adopted the Uniform Trade Secrets Act (UTSA) which became the law of those States.

Definitions of Trade Secrets

U.S.C. 1939 (3) reads:

“…(3) the term “trade secret” means all forms and types of financial, business, scientific, technical, economic, or engineering information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods, techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored, compiled, or memorialized physically, electronically, graphically, photographically, or in writing if—

(A) the owner thereof has taken reasonable measures to keep such information secret; and

(B) the information derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information;…”

The UTSA defines “trade secret” as:

“”Trade secret” means information, including but not limited to, a formula, pattern, compilation, program, device, method, technique, or process, that:

Derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and
Is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.”

What is misappropriation?

18 U.S.C. 1939 (5 & 6) read:

“(5) the term “misappropriation” means—

(A) acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or

(B) disclosure or use of a trade secret of another without express or implied consent by a person who—

(i) used improper means to acquire knowledge of the trade secret;

(ii) at the time of disclosure or use, knew or had reason to know that the knowledge of the trade secret was—

(I) derived from or through a person who had used improper means to acquire the trade secret;

(II) acquired under circumstances giving rise to a duty to maintain the secrecy of the trade secret or limit the use of the trade secret; or

(III) derived from or through a person who owed a duty to the person seeking relief to maintain the secrecy of the trade secret or limit the use of the trade secret; or

(iii) before a material change of the position of the person, knew or had reason to know that—

(I) the trade secret was a trade secret; and

(II) knowledge of the trade secret had been acquired by accident or mistake;

What are Improper Means?

(6) the term “improper means”—

(A) includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means; and

(B) does not include reverse engineering, independent derivation, or any other lawful means of acquisition;…”

The UTSA Defines “Improper Means” and “Misappropriation”

(1) “Improper means” includes theft, bribery, misrepresentation, breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means;

(2) “Misappropriation” means:

(a) Acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or

(b) Disclosure or use of a trade secret of another without express or implied consent by a person who:

1. Used improper means to acquire knowledge of the trade secret; or
2. At the time of disclosure or use, knew or had reason to know that his knowledge of the trade secret was:
3. Derived from or through a person who had utilized improper means to acquire it;
4. Acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or
5. Derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use; or
6. Before a material change of his position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake.

If your company needs assistance protecting its Trade Secrets, please contact Business Patent Law, PLLC.

Ask Us Anything… about Intellectual Property!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Legal Experts For Golf?

July 10, 2023July 10, 2023Kenneth Pearce

Yes, legal experts for golf … really! How could this ever happen?

The Background

Three promotors joined forces to promote a regional golf tournament for charity. The United States Golf Association rules controlled the rules of play for the tournament. Contestants paid an entry fee to play in the golf tournament. The winner of each flight was guaranteed a golf-related prize and the overall low-stroke winner was guaranteed a modest monetary prize. The majority of the entry fees were to be donated to charity.

In addition (and separate from the tournament) each entrant was given one chance to make a hole-in-one. If any entrant made a hole-in-one, the reward was $10 million dollars. The host golf club listed the potential hole-in-one shot as a 366 yard par 4 with a dogleg left.

The “Hole-in-One”

One of the entrants took his stance in the tee box and drove his golf ball toward the hole. The golf ball struck a sprinkler head, made an unusually large bounce toward the green, landed on the green, and ultimately trickled into the cup for a hole-in-one. There were at least twenty people who witnessed the hole-in-one. With so many witnesses, how could legal experts for golf be needed?

The Ugly Mess

To say the least, the promoters were shocked that any entrant could make a 366 yard hole-in-one. The promoters turned against each other and refused to pay the $10 million dollars for the “alleged” hole-in-one. The “hole-in-one” had become an ugly mess. The golfer who made the hole-in-one sued the promotors for the promised $10 million dollars. A jury trial followed.

Legal Experts For Golf

Both the golfer making the hole-in-one and the promoters hired legal experts who were qualified at trial to testify in their respective fields.

Promoter Expert 1

The Cincinnati expert held several Patents for Global Positioning System devices including software. Because of the hole’s dogleg, the Cincinnati expert testified that golf ball only travelled 299 yards from tee to hole and not 366 yards as required by the promoters.

Golfer Expert

The Louisville expert was chief grounds keeper for a Louisville golf club. Using the path played by the most players yardage measurement, the Louisville expert testified the golf ball actually traveled 369 yards from tee to cup. Patented reel, tape and rods were used to determine the golf ball’s yardage.

Promoter Expert 2

The Lexington expert was a club professional. The Lexington expert testified that the Golfer’s expert used an incorrect measurement for the played by most players yardage measurement and the golf ball actually traveled only 354 yards from tee to cup. Stated simply, the Louisville expert had utilized incorrect lines to measure the doglegged hole. A patented state-of-the laser and corresponding rods was used to calculate the golf ball’s yardage.

Promoter Expert 3

The Indianapolis expert was an independent contractor supplying data to the United States Golf Association. The Indianapolis expert testified: along with being witnessed by others, a round of at least nine holes must be played before a hole-in-one becomes valid. Thus, the one-shot only alleged “hole-in-one” was not in fact a hole-in-one.

Once this evidence is presented, it is up to a jury to determine which expert is most convincing in this case by a preponderance of the evidence. How do YOU think a jury would decide?

Ask Us Anything… about Intellectual Property!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

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Patent Enablement

May 31, 2023May 31, 2023Kenneth Pearce

Patent Enablement

What is “Patent Enablement” and is it required to procure a Patent?

For a Patent to be valid, the Patent’s Specification shall, “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.”

-35 United States Code 112(a)

Defendants in a patent infringement suit can argue that the Patent is invalid because it does not enable one skilled in the art to make or use the invention claimed. In short, the Patent is missing Patent enablement.

What the US Supreme Court Says About Patent Enablement

The United States Supreme Court Revisits Patent Enablement in Amgen Inc. et al. v. Sanofi et al (May 18, 2023)

Justice Gorsuch delivered a unanimous decision of the United States Supreme Court.

On pages 5-6, the Court writes:

“The case comes to us this way. Several years ago, petitioners (Amgen) obtained two patents. Together, these patents claim a monopoly over all antibodies that (1) bind to specific amino acids on a naturally occurring protein known as PCSK9, and (2) block PCSK9 from impairing the body’s mechanism for removing LDL cholesterol from the bloodstream. Soon after receiving these patents, Amgen sued respondents (Sanofi) for infringement. In response, Sanofi argued that the patents were invalid under §112 of the Patent Act. That provision requires a patent applicant to describe its invention “in such full, clear, concise, and exact terms as to enable any person skilled in the art . . . to make and use the [invention].” 35 U. S. C. §112(a). Sanofi contended that Amgen’s patents failed to meet this standard because they sought to claim for Amgen’s exclusive use potentially millions more antibodies than the company had taught scientists to make. In the end, both the district court and Federal Circuit sided with Sanofi. The question we face is whether to disturb their judgment.”

On pages 9-10 of Amgen, it is written:

“As part of its submission to the patent office, Amgen identified the amino acid sequences of 26 antibodies that perform these two functions, and it depicted the three-dimensional structures of two of these 26 antibodies. 987 F.3d, at 1083. But beyond that, Amgen only offered scientists two methods to make other antibodies that perform the binding and blocking functions it described. The first method is what Amgen calls the “roadmap.” Brief for Petitioners 13. At a high level, the roadmap directs scientists to: (1) generate a range of antibodies in the lab; (2) test those antibodies to determine whether any bind to PCSK9; (3) test those antibodies that bind to PCSK9 to determine whether any bind to the sweet spot as described in the claims; and (4) test those antibodies that bind to the sweet spot as described in the claims to determine whether any block PCSK9 from binding to LDL receptors. See id., at 13-14. The second method is what Amgen calls “conservative substitution.” Id., at 14, 17. This technique requires scientists to: (1) start with an antibody known to perform the described functions; (2) replace select amino acids in the antibody with other amino acids known to have similar properties; and (3) test the resulting antibody to see if it also performs the described functions. See id., at 14-15. Amgen Inc. v. Sanofi (2023)”

On page 19, the Court wrote:

“Decisions such as Wood and Minerals Separation establish that a specification may call for a reasonable amount of experimentation to make and use a patented invention. What is reasonable in any case will depend on the nature of the invention and the underlying art. See Minerals Separation, 242 U.S., at 270-271; see also Mowry v. Whitney, 14 Wall. 620, 644 (1872) (“[T]he definiteness of a specification must vary with the nature of its subject. Addressed as it is to those skilled in the art, it may leave something to their skill in applying the invention.”). But in allowing that much tolerance, courts cannot detract from the basic statutory requirement that a patent’s specification describe the invention “in such full, clear, concise, and exact terms as to enable any person skilled in the art” to “make and use” the invention. §112(a). Judges may no more subtract from the requirements for obtaining a patent that Congress has prescribed than they may add to them. See Bilski v. Kappos, 561 U.S. 593, 602-603, 612 (2010). Amgen Inc. v. Sanofi (2023)”

On page 20, Justice Gorsuch concluded:

“While the technology at the heart of this case is thoroughly modern, from the law’s perspective Amgen’s claims bear more than a passing resemblance to those this Court faced long ago in Morse, Incandescent Lamp, and Holland Furniture. Amgen seeks to monopolize an entire class of things defined by their function-every antibody that both binds to particular areas of the sweet spot of PCSK9 and blocks PCSK9 from binding to LDL receptors. The record reflects that this class of antibodies does not include just the 26 that Amgen has described by their amino acid sequences, but a “vast” number of additional antibodies that it has not. 987 F.3d, at 1085, 1088; see 2019 WL 4058927, *8 (“at least millions of candidates”); see also Tr. of Oral Arg. 52-53. Much as Morse sought to claim all telegraphic forms of communication, Sawyer and Man sought to claim all fibrous and textile materials for incandescence, and Perkins sought to claim all starch glues that work as well as animal glue for wood veneering, Amgen seeks to claim “sovereignty over [an] entire kingdom” of antibodies. Incandescent Lamp, 159 U.S., at 476.”

“That poses Amgen with a challenge. For if our cases teach anything, it is that the more a party claims, the broader the monopoly it demands, the more it must enable. That holds true whether the case involves telegraphs devised in the 19th century, glues invented in the 20th, or antibody treatments developed in the 21st. Amgen Inc. v. Sanofi (2023)”

On page 23, Justice Gorsuch held:

“Section 112 of the Patent Act reflects Congress’s judgment that if an inventor claims a lot, but enables only a little, the public does not receive its benefit of the bargain. For more than 150 years, this Court has enforced the statutory enablement requirement according to its terms. If the Court had not done so in Incandescent Lamp, it might have been writing decisions like Holland Furniture in the dark. Today’s case may involve a new technology, but the legal principle is the same. The judgment is Affirmed.”

If you find this a little complex and need assistance to make sure your Patent meets the Patent enablement requirement, please contact Business Patent Law, PLLC.

Ask Us Anything… about Intellectual Property!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact us.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Copyright Rules Regulations and Frustrations

Copyright Applications

May 4, 2023May 13, 2023Kenneth Pearce

Copyright Applications

This blog is an expansion of BPL’s July 9, 2020 blog on Copyright Registrations in an effort to further help you understand the copyright process.

It Can Be Complex

The process of applying for a Copyright Registration, according to the United States Code, is as follows:

To procure US Copyright Registrations, the creator/owner of the original work(s) of authorship must be fixed in a tangible medium of expression. 17 United States Code 102.

Simplifying The Code

Let’s consider that statement in normal-speak instead of legalese.

The “creator/owner” can be self explanatory, as is the “original work.”
Depending on circumstances, the creator is not always the owner.
“Authorship” means somebody needs to create the original work.
The “tangible medium of expression” can be anything from a physical copy of the work, such as a book or a painting, to a digital copy, such as a computer file or an online video.

With that information, you now know that once there’s a copy of the work (tangible medium of expression), you as the creator/owner will need to file a Copyright Application with the Copyright Office to procure a Copyright Registration.

Benefits Of A Copyright Registration

The application must include information about the work, such as the title, the author, and the date of creation. Once the application is filed, the Copyright Office may issue a Copyright Registration. They usually do, but not always. Also, Copyright Registration is not required to secure a Copyright, but it does provide a number of benefits, including the ability to sue in federal court for Copyright infringement and statutory damages.

Selecting The Correct Copyright Application Form May Not Be Straight Forward

You didn’t expect anything at the Copyright Office to be simple or easy did you? There are different types of authorships which require different Copyright Office paper forms or digital portals.

Principal Categories of Copyright Applications

Literary Works
Performing Arts
Visual Arts
Motion Pictures
Digital Works not otherwise categorized
Photographs

Copyright Office Forms/Digital Portals

Literary Works (Fiction, Non-Fiction, Poetry, Articles, Periodicals)

Literary Work (Form TX)
Serial Publications (Form SE)
Form CON

Performing Arts (Music, Lyrics, Sound Records, Scripts, Stage Plays)

Works of the Performing Arts (Form PA)
Sound Recordings (Form SR)
Form CON

Visual Arts (Artwork, Illustrations, Jewelry, Fabric, Architecture)

Visual Arts Work (Form VA)
Form CON

Motion Pictures (Movies, TV Shows, Video Games, Animation, Videos)

Works of the Performing Arts (Form PA)
Form CON

Group Copyright Applications

1. Group Registration for Works on an Album of Music (GRAM) –

Group Registration of musical works, recordings, photos, artwork and liner notes that are published on the same album

2. Group Registration of Short Online Literary Works (GRTX) –

Digital Works not otherwise categorized (Computer Programs, Databases, Blogs, Websites)
Group Registration of Published Photographs
Group Registration of Short Online Literary Works

3. Group Registration of Unpublished Works (GRUW) –

Photographs (News Photographs, Selfies, Wedding Photographs, Family Photographs)
Photographic Databases

If you want to secure a copyright on your original works and need assistance filing your Copyright Applications, contact BPL we would be happy to handle this task for you.

Ask Us Anything… about Intellectual Property!

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and have a topic or question you would like us to address in the blog, please send us an email.

We provide intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Restriction Requirement

April 6, 2023April 6, 2023Kenneth Pearce

What Our Company Did

We are a start-up existing on a shoe string budget.

An inventor not associated with our company invented a product. Because our company expected the product would improve our bottom line, we opted to take a license from the inventor to make and sell the product.

Apparently, to save legal fees, the inventor opted to represent himself before the USPTO. Unfortunately, about two years after filing the Patent Application, the inventor received a Restriction Requirement from the USPTO.

What do we do now?

What is a Restriction Requirement?

Title 35 United States Code 121 – Restriction Requirement

35 U.S.C. 121 reads:

“If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.”

35 U.S.C. 121 prevents a tribunal from using the first Application and/or first Patent from which the second Application was divided from being used to reject the claims of the second Application and/or subsequent second Patent.

Restriction Requirement – How The Inventor Can Respond

In the Restriction Requirement, the Examiner will argue something like, “The species are independent or distinct because as disclosed the different species have mutually exclusive characteristics for each identified species. In addition, these species are not obvious variants of each other based on the current record.” Generally, the Examiner will suggest groupings of claims from which the Applicant can select a single group of claims for first examination.

An Applicant has an opportunity to argue against the Restriction Requirement by stating that the species are patentably indistinct. However, this can be a risky strategy. Such an admission can be used to reject the second species of claims as obvious in view of the first species of claims and other prior art. In other words, the claims can be rejected as obvious pursuant to 35 U.S.C. 103.

The Better Strategy When Responding to a Restriction Requirement

When the Examiner argues for a Restriction Requirement, the Applicant can elect an invention for first prosecution.

In most instances, the better strategy for the Applicant is to elect one of the Examiner’s groupings claims for first prosecution. During prosecution, the scope of the claims can be expanded by amendment. Frequently, after the examination of the first grouping of claims, Applicant’s will file a Divisional Application including additional claims related to the invention.

Responding to a Restriction Requirement can be tricky. If you need assistance responding to a Restriction Requirement, please contact Business Patent Law, PLLC.

Ask Us Anything… about Intellectual Property!

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need assistance, please contact Business Patent Law, PLLC.

If you would like to stay up-to-date with news that impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Not All Patent Offices are the Same

March 8, 2023March 8, 2023Kenneth Pearce

Patent Offices around the world will likely have different rules of practice. In other words, how you obtain your Patent can require different legal procedures and strategies.

Patent Office Characteristics

The United States Patent and Trademark Office (USPTO) allows an Applicant to file an Original Patent Application, a Continuation Application, a Continuation-in-Part Application and/or a Divisional Application.
The Canadian Intellectual Property Office (CIPO) allows an Applicant to file an Original Patent Application or Divisional Application.
The European Patent Office (EPO) allows an Applicant to file an Original Patent Application or Divisional Application.

Types of Patent Applications

A Divisional Application is a Patent Application that is “divided out” from an Original Patent Application.
A Continuation Application is a Patent Application that claims priority to a prior pending Patent Application where the new Continuation Application is filed before the prior Pending Patent Application is patented. A Continuation Application is supported by the Specification and Drawings of the prior pending Patent Application.
A Continuation-in-Part Application is a Patent Application that claims priority to a prior pending Patent Application where the new Continuation-in-Part Patent Application is filed before the prior Pending Patent Application is patented. A Continuation-in-Part Application includes “new matter” that was in included with the Specification and/or Drawings of the prior pending Patent Application.
Divisional Patent Applications, Continuation Patent Application and Continuation-in-Part Patent Applications can be utilized by the owner to extend the scope of the Patent’s limited monopoly.

The Scenario

Our Louisville company filed original Patent Applications for the “gadget” in the USPTO, the CIPO, the EPO and other Patent Offices around the globe. After filing the Patent Applications, our engineering department invented our new and improved “gadget” that was similar to but slightly different than the original “gadget.” Management decided to file additional Patent Applications claiming the improved “gadget.”

Potential Patent Offices’ Strategies

United States – USPTO

In the United States, your company could file any of the above Patent Applications for the improved “gadget.”

According to 37 C.F.R. 1.53, “a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c) or 386(c).”

European Union – EPO

The only potential option in the EPO is to file a Divisional Patent Application. However, your improved “gadget” claims would only be allowed by the EPO if you can meet the conditions of EPO Rule 3.1.

EPO Rule 3.1 – Replacement or Removal of Features from a Claim

“The requirements of Art. 123(2) are only met if the replacement or removal of a feature lies within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing (or the date of priority according to Art. 89, from the whole of the application documents G 3/89, G 11/91 and G 2/10).

Art. 123(2)

If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2):

(i)      the replaced or removed feature was not explained as essential in the originally filed disclosure;

(ii)     the skilled person would directly and unambiguously recognize that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve (in this context special care needs to be taken in cases where the technical problem is reformulated during the proceedings, see H-V, 2.4 and G-VII, 11); and

(iii)    the skilled person would recognize that the replacement or removal requires no modification of one or more features to compensate for the change (it does not in itself alter the invention).”

Thus, in the EPO, it is unlikely than an Applicant can meet the strict conditions of Art. 123(2) for an allowable amendment to the claims of a European Divisional Patent Application.

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What are Mask Works?

February 14, 2023February 14, 2023Kenneth Pearce

Mask Works are a type of intellectual property created by the Semiconductor Chip Protection Act (SCPA) of 1984.

Statutory Mask Works rights are set forth in Title 17 United States Code §§ 901-914. In general, the SCPA allows for the protection of the combination of a mask and a semiconductor chip.

Some Requirements for and Rights associated with Intellectual Property Protection of Mask Works

A mask work must be a series of related images, however fixed or encoded (1) that have or represent the predetermined three dimensional pattern of metallic, insulating, or semiconductor material present or removed from the layers of a semiconductor chip product; and (2) in which series the relation of the images to one another is that each image has the pattern of the surface of one form of the semiconductor chip product.
A semiconductor chip product is defined as the final or intermediate form of any product (1) intended to perform electronic circuitry functions and (2) having two or more layers of metallic, insulating, or semiconductor material, deposited or otherwise placed on or etched away or otherwise removed from a piece of semiconductor material in accordance with a predetermined pattern.
The Registration of the Mask Work is effective on the date of the Registration or the date the Mask Work is first commercially exploited anywhere in the world by an owner as defined in 17 United States Code § 902.
A Registration of the Mask Work is effective for ten years. However, to secure protection of the Mask for the entire 10-year term, the owner must register the work with the Copyright Office within two years of the date on which the Mask work is first commercially exploited or the potential protection will be lost.
17 United States Code § 905 reads, “The owner of a Mask Work provided protection under this chapter has the exclusive rights to do and to authorize any of the following: (1) to reproduce the Mask Work by optical, electronic, or any other means; (2) to import or distribute a semiconductor chip product in which the Mask Work is embodied; and (3) to induce or knowingly to cause another person to do any of the acts described in paragraphs (1) and (2).”

Limitations of Owner’s Rights

Protection is not available for a Mask Work that is not original or consists of designs that are staple, commonplace, or familiar in the semiconductor industry, or variations of such designs, combined in a way that, considered as a whole, is not original.
It is not an infringement of the exclusive rights of the owner of a Mask Work for— (1) a person to reproduce the Mask Work solely for the purpose of teaching, analyzing, or evaluating the concepts or techniques embodied in the Mask Work or the circuitry, logic flow, or organization of components used in the Mask Work; or (2) a person who performs the analysis or evaluation described in paragraph (1) to incorporate the results of such conduct in an original Mask Work which is made to be distributed. 17 United States Code § 906.
An innocent purchaser of an infringing semiconductor chip product — (1) shall incur no liability under this chapter with respect to the importation or distribution of units of the infringing semiconductor chip product that occurs before the innocent purchaser has notice of protection with respect to the Mask Work embodied in the semiconductor chip product and (2) shall be liable only for a reasonable royalty on each unit of the infringing semiconductor chip product that the innocent purchaser imports or distributes after having notice of protection with respect to the Mask Work embodied in the semiconductor chip product. 17 United States Code § 907.

Mask Work Notice

The notice shall consist of— “(1) the words “Mask Work”, the symbol *M*, or the symbol Ⓜ (the letter M in a circle); and (2) the name of the owner or owners of the Mask Work or an abbreviation by which the name is recognized or is generally known.” 17 United States Code § 909.

If your company needs assistance with registration of Mask Works, please contact BPL.

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