Questions about Provisional Patent Application

Provisional Patent Application

The following is a case study example to help companies with questions about Provisional Patent Applications.

The Situation

Five Months Ago our Company’s Engineer filed a Provisional Patent Application – What can we do?

First, the facts: A Provisional Patent Application does not generate a Patent.  Patents are always granted from Nonprovisional Applications.

Your company has several options  – provided the Provisional Application is directed to:

  1. The patentable subject matter required by 35 United States Code (U.S.C.) 101 in view of the judicial exceptions thereto; and
  2. Is enabled and the best mode is disclosed as required by 35 U.S.C. 112.

Options for the Company’s Pending Provisional Patent Application

If the Provisional Application meets the requirements of 35 U.S.C. 112:

  • Allow the Provisional Application to expire at one year from the filing date of the Application
  • File a US Nonprovisional Application claiming the benefit of the Provisional Application
  • File an International Application claiming the benefit of the Provisional Application

If your Provisional Application does not meet the requirements of 35 U.S.C. 112:

Provisional Patent Application: Next Steps

Actions that can be implemented subsequent to the filing of Provisional Patent Applications

  • Contact a seasoned patent attorney in a timely fashion. (Do not wait until three weeks before the Provisional Applications will expire to contact a  patent attorney.)
    • If an international-type of Patent Application claiming the benefit of the Provisional Application is to be filed, engage the patent attorney at approximately six months subsequent to the filing date of the Provisional Application
    • If only a US Nonprovisional Application is to be filed claiming the benefit of the Provisional Application is to be filed, engage the patent attorney at approximately nine months subsequent to the filing date of the Provisional Application
  • If formal Drawings were not filed with the Provisional Applications, drawings in accordance with USPTO requirements should be prepared
  • If time permits, conduct a Patentably Search and utilize a patent attorney to prepare a Patentability Report

Save Yourself Some Money

Although not required to file Nonprovisional Applications in the USPTO, it appears that clients utilizing the combination of a Patentability Search and Patentability Report incur less total expenses in procurement of a Patent than clients who opt to not utilize a Patentability Search and Report prior to filing the Nonprovisional Application.

Need Additional Help?

If you need legal assistance in preparing Patent Applications, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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.

Patent Infringement Cease and Desist Letter

Patent Infringement: The Cease and Desist Letter

What is Patent Infringement?

Patent infringement is similar to trespassing on private real estate. A deed for real property determines the real property’s boundary and what constitutes a trespass. In a similar vein, Patent claims define the intellectual property boundary of the Patent and what establishes an infringement.

Patent infringement is defined in United States Code Section (U.S.C.) 271. In part, Section 271 reads:

“Infringement of Patent (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

Patent Infringement Damages

Patent infringement damages are defined in U.S.C. 284 which, in part, reads:

“Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court. When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d).”

What Happened to Our Business was Surprising

We received a letter from the legal department of Company ABC demanding payment of damages for our alleged sales of Company ABC’s patented gadget. Prior to receiving the letter, our business was not aware that Company ABC’s gadget was patented. What can we do?

How To Defend Against Allegations of Patent Infringement

  • Contact an experienced patent attorney.
  • Determine if the patent is in full force and effect and is owned either directly or indirectly by Company ABC. The USPTO Assignment Database gives notice to the world of ownership rights in assigned Patents.
  • Determine if the gadget was identified by the patent number as set forth in 35 U.S.C. 287(a). In part, 35 U.S.C. 287(a) reads, “In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.”
  • Calculate the expiration date of the Patent. The USPTO website includes a Patent Term Calculator to assist in determining if a Patent remains in full force and effect. Practicing the claimed subject matter of an expired Patent is not an infringement.
  • If there is no settlement agreement with company ABC, make no payments to Company ABC.
  • In this scenario, receiving a letter from the legal department of Company ABC instead of a law firm is unusual.

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

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How to Revive Your Expired Trademark

Reviving Abandoned Trademark Applications

Reviving Abandoned Trademark Applications

Our company is has abandoned trademark applications and the United States Patent and Trademark Office (USPTO) has issued Notices of Abandonment for some of our trademark applications. What is the procedure to revive these abandoned trademark applications?

Abandoned Trademark Applications: How it Happened

Over a year ago, in anticipation of future sales some of our company’s research and development pipeline products, the marketing department filed several Intent-to-Use Trademark Applications in the USPTO. Our vice president of sales recently authorized his department to take advance orders for two new products and he was informed that the Intent-to-Use Trademark Applications for the two new products were considered abandoned by the USPTO.

Why it Matters

We just learned that one of our competitors filed two Intent-to-Use Trademark Applications in the USPTO and that those two Trademark Applications were identical to our company’s now abandoned Trademark Applications.

The Question

Can we do anything to keep our competitor from obtaining federal registrations for our Trademarks?

The Answer

Depending on the timelines of each company’s Trademark Applications, maybe.

Petition to Revive Requirements

Under most factual circumstances, 37 Code of Federal Regulations 2.66 requires that the Petition to Revive abandoned Trademark Applications must be filed within two months of the USPTO’s Notice of Abandonment of the Trademark Application.

Examples of requirements associated with the filing of Petition to Revive an abandoned Trademark Application in the USPTO are:

Received Petition Type 1: Office Action

This petition type indicates no response was filed or it was filed untimely. To address the Office Action, you will need to include in your request:

  • Petition fee (one for each application)
  • A statement that the delay in filing a response was unintentional, signed by someone with firsthand knowledge of the facts.
  • A complete response to the outstanding office action signed by the applicant or, if the applicant is represented by an attorney, signed by their attorney.
  • NOTE: If the abandonment was entered after a final office action, the response must include either a notice of appeal or a statement that no appeal or petition is being filed from the final refusal(s) or requirement(s).

Received Petition Type 2: Notice of Allowance received

This petition type indicates that no statement of use or extension request was filed, or they were filed untimely. To address a Notice of Allowance, you must include in your request:

  • Petition fee (one for each application)
  • A statement that the delay in filing a Statement of Use or extension request was unintentional, signed by someone with firsthand knowledge of the facts.
  • The required fees for all extension requests that have become due since the Notice of Allowance was issued.
  • A Statement of Use, an extension request, or (in a multiple-basis application) an amendment deleting the section 1(b) basis or deleting all of the intent to use goods/services and seeking registration based on an already existing section 1(a) and/or section 44(e) basis.

What Happens Next?

If Your Request is Granted

If the USPTO grants the Petition to Revive, your abandoned Trademark Application is reinstated to “pending” status.

In your situation, if your company’s petition to revive two of its abandoned Intent-to-Use Applications is granted, your company’s pending Intent-to-Use Applications would pre-date your competitor’s filings. With regard to each company’s Intent-to-Use Applications, your company’s procedural rights associated with your Intent-to-Use Applications would be superior to your competitor’s procedural.

If Your Request is Not Granted

If the USPTO does not grant your Petition, your competitor would have superior procedural rights. Depending on the facts, even if your request is denied, your company may have other legal actions that can prevent your competitor from using trademarks created by your company.

If your enterprise needs legal assistance procuring/managing/enforcing your intellectual properties, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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.

Beach Buggy Invention Tires Litigation Intellectual Property

Expert Witnesses and Legal Proceedings

The Situation

Our company is a family owned business and we supply valve stems to motor vehicle rim manufactures.  We are a named party in a class action law suit against the motor vehicle manufactures, the international tire manufacturer and the rim manufacturers that utilized our valve stems.

Allegedly, the defective tires were attached to certain models of passenger cars.  The Plaintiffs aver that the tires “blew out” at maintained speeds of 70 MPH for more than fifteen minutes when the ambient temperature exceeded 85 degrees Fahrenheit.

Expert Witnesses and Adversarial Proceedings

Can our company use expert witnesses to defend against legal claims made against us?  Yes.

Can we use engineers, lay people and others as expert testimony to prove that the class action suit against our company is without merit?  It depends, in the federal system, an expert witness’ testimony is controlled by the federal rules of evidence.

Some Relevant Federal Rules of Evidence:

Rule 701. Opinion Testimony by Lay Witnesses

If a witness is not testifying as an expert, testimony in the form of an opinion is limited to one that is:

    • rationally based on the witness’s perception;
    • helpful to clearly understanding the witness’s testimony or to determining a fact in issue; and
    • not based on scientific, technical, or other specialized knowledge within the scope of Rule 702.

Rule 702. Testimony by Expert Witnesses

A witness who is qualified as an expert by knowledge, skill, experience, training, or education may testify in the form of an opinion or otherwise if:

    • the expert’s scientific, technical, or other specialized knowledge will help the trier of fact to understand the evidence or to determine a fact in issue;
    • the testimony is based on sufficient facts or data;
    • the testimony is the product of reliable principles and methods; and
    • the expert has reliably applied the principles and methods to the facts of the case.

Rule 703. Bases of an Expert

An expert may base an opinion on facts or data in the case that the expert has been made aware of or personally observed.

Can our Legal Team use the following as Expert Witnesses?

  1. The Director of our engineering department who has twenty years experience of overseeing quality control in the manufacture of our valve stems to prove that our valve stems were not defective. Yes – would qualify as an expert.
  2. The Director of our engineering department who has twenty years of experience of overseeing quality control in the manufacture of our valve stems to prove that the tires were not defective. No – would not qualify as an expert.
  3. Our vice president of sales to prove that 75% of the rims associated with the alleged defective tires did not utilize our valve stems.  Yes – would qualify as an expert, and if challenged should be allowed to give a lay opinion on the issue.
  4. The lead investigator of an insurance company’s automobile accident reconstruction team to prove that the tires were not defective. Yes – would qualify as an expert.
  5. An independent one-man shop seller of new tires with thirty years of experience of removing worn passenger car tires and installing new replacement tires to prove that the tires were not defective. Via news reports, the tire seller observed that seals for the alleged “blow out” tires did not contact their rims in accordance with industry protocol – outward and inward sides of tires were reversed when installed on their rims. Yes – would qualify as an expert.
  6. The above one-man shop seller observes that many “beach buggy” owners asked him how to reverse the tires on their cars. The witness testifies that social media was instructing “beach buggy” owners to reverse the inward and outward sides of the tires for a better “beach experience.” The witness opines that the reversed tires caused the tires to “blow out.” No – would not qualify as an expert to give opinion on the cause of the blow outs. However, the witness could testify as a layman regarding his interaction with “beach buggy” owners and social media.

If your enterprise needs legal assistance procuring/managing/enforcing your intellectual properties, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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 Registrations and Copyright Protections

Copyright Registrations

What are Copyright Registrations?

Copyright Registrations are defined in Title 17 of the United States Code (U.S.C). In part, 17 U.S.C. 102 reads:

“(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device….

 

Works of authorship include the following categories:

      • literary works
      • musical works, including any accompanying words
      • dramatic works, including any accompanying music
      • pantomimes and choreographic works
      • pictorial, graphic, and sculptural works
      • motion pictures and other audiovisual works
      • sound recordings
      • architectural works”

A Competitor Published our Copyright – What can We do?

Our advertising manager had lunch with a competitor’s public relations manager. Unfortunately, over lunch, our advertising manager discussed the focus of our advertising campaign. He also discussed our new audiovisual commercial for our third most profitable product line. Before we could publish our new commercial, our competitor launched its own commercial. Their commercial included every focus point from our advertising campaign.

According to our accounting estimates, their use of our ideas reduced our sales by $500K. Can we sue our Competitor for Copyright Infringement?

The answer is… it depends.

What is Required to Prove Copyright Infringement?

Among other things, a Copyright Registration requires, a work “…of authorship fixed in any tangible medium of expression…”

  • If your company had filed an Application for Copyright Registration, prior to the advertising manager’s disclosure to the public relations manager, then Yes, you can probably prove copyright infringement. (The work of authorship was fixed in a tangible medium of expression.)
  • If your company can provide a written document, audio recording or audiovisual recording of what the advertising manager disclosed to the public relations manager then Yes. It may be worthwhile to pursue a claim of copyright infringement, since “the work of authorship was fixed in a tangible medium of expression.”
  • If your company relies only on oral testimony of the advertising manager to prove existence of a Copyright then No. The likelihood of a successful suit is very low since the focus concept was an idea and not “a work of authorship fixed in a tangible medium of expression.”

Advantages of Copyright Registrations

  • Evidence of ownership of the registered work of authorship
  • Public notice of ownership of the work
  • Federal District Court jurisdiction for an infringement suit
  • Possibility of statutory damages and attorneys’ fees

If your enterprise needs legal assistance procuring, managing and enforcing your Copyrights, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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.

Opposition to a Trademark

Opposition Proceedings

What is a USPTO Opposition Proceeding?

Another Company filed a Trademark Application in the United States Patent & Trademark Office that is almost identical to our Trademark.  What can we do?  Can we institute an Opposition?

In view of such facts, your company has at least the following options:

  • Do nothing
  • Purchase the troublesome Trademark
  • Send a Cease and Desist Letter
  • If your company owns a federal Registration, institute a federal Trademark infringement legal action in the appropriate jurisdiction and venue
  • Possibly – institute a False Designation of Origin legal action in the appropriate federal jurisdiction and venue
  • Initiate a trademark infringement proceeding in a state court under the appropriate state statute or at common law
  • Initiate a legal proceeding before the USPTO’s Trademark Trial and Appeal Board

Which option is more cost-beneficial for your company? That is management’s decision.  As a general rule, the legal costs of an Opposition Proceeding are much less than the legal costs of a federal or state law infringement case.

15 U.S.C. 1063, in part, reads:

Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered….”

Any person who believes he/she/it could be damaged by the registration of the Mark on the Principal Register of the United States can institute an Opposition Proceeding before the USPTO’s Trademark Trial and Appeal.  If the Opposer successfully proves the case, the Trademark Application will not mature into a federal Registration.

Oppositions are generally less costly to litigate than cases in the federal or state courts.  Like cases in the federal courts, the Federal Rules of Evidence and the Federal Rules of Civil Procedure apply to an Opposition Proceeding.

Oppositions can be conducted with or without oral hearings before the Trademark Trial and Appeal Board (TTAB).

Successful Opposition Proceedings

For an Opposer (plaintiff) to be successful before the TTAB, they must prove one or more of the following:

  • (1) Defendant’s [the owner of the mark] mark so resembles a mark registered in the Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods or services of the defendant, to cause confusion, or to cause mistake, or to deceive.
  • (2) Defendant’s mark, when used on or in connection with the goods or services of the defendant, is merely descriptive or deceptively misdescriptive of them.
  • (3) Defendant’s mark is geographically deceptive, that defendant’s mark consists of or comprises immoral, deceptive, or scandalous matter, that defendant’s mark falsely suggests a connection with plaintiff’s name or identity, or that defendant’s mark is a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and was first used on or in connection with wines or spirits by the applicant on or after January 1, 1996.
  • (4) There was no bona fide use of defendant’s mark in commerce prior to the filing of the use-based application for its registration under Trademark Act § 1(a), for a Trademark Act § 1(b) application, within the expiration of the time for filing a statement of use.
  • (5) Defendant did not have a bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under Trademark Act § 1(b).
  • (6) Defendant is not (and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark.
  • (7) The term for which registration is sought or for which registration has been obtained has not been used as a trademark or service mark.
  • (8) Defendant’s mark has been abandoned due to nonuse with intent not to resume use.
  • (9) Defendant’s mark is the title of a single creative work and not considered a trademark.
  • (10) That Defendant’s mark is generic.

If your enterprise needs legal assistance procuring/managing/enforcing your Trademarks/Service Marks, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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.

Microorganisms Patented

What is Patentable: From Microorganisms to Abstract Ideas

What Inventions are Patentable?

35 United States Code (U.S.C.) 101 provides the statutory basis for what inventions are patentable.

35 U.S.C. 101 reads, “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Are Manmade Microorganism Patentable?

In the US Supreme Court case of Diamond v. Chakrabarty, 447 U.S. 303 (1980), the Court held that 35 U.S.C. 101 did not prohibit a manmade microorganism from being patented.

On page 309 of Diamond, Mr. Chief Justice Burger wrote, “…when the patent laws were recodified, Congress replaced the word “art” with “process,” but otherwise left Jefferson’s language intact. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.

Are Abstract Ideas Patentable?

1.) In this example, the question posed involves an invention explaining how buyers and sellers in the energy market protect or hedge against the risk of price changes to determine if it is patentable.

In the US Supreme Court case of Bilski v. Kappos, 561 U.S. 593 (2010) it was held that Bilski’s program was not patentable subject matter.

On Pages 611-612, Mr. Justice Kennedy wrote, “The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook.  Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”

2. In this example, the question involves a computer-implemented scheme for mitigating “settlement risk” as a patentable abstract idea.

On Page 212 of the US Supreme Court Case of Alice Corp. Pty Ltd. v. CLS Bank International, 573 U.S. 208 (2014), Mr. Justice Thomas held:

“The patents at issue in this case disclose a computer-implemented scheme for mitigating “settlement risk”…only one party to a financial transaction will pay what it owes) by using a third-party intermediary. The question presented is whether these claims are patent eligible under 35 U.S.C. § 101, or are instead drawn to a patent-ineligible abstract idea. We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.”

Judicial Exceptions to Patentability

On page 216 of Alice Corp. Pty Ltd., the long standing judicial exemptions to patentability were reiterated.  The Court stated, “We have long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.”…We have interpreted § 101 and its predecessors in light of this exception for more than 150 years.”

The judicial exceptions to patentabilty are:

    • Laws of nature
    • Natural phenomena
    • Abstract ideas

On page 217 of Alice Corp. Pty Ltd., Mr. Justice Thomas wrote:

“Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the ” ‘buildin[g] block[s]’ ” of human ingenuity and those that integrate the building blocks into something more,…thereby “transform[ing]” them into a patent-eligible invention. The former “would risk disproportionately tying up the use of the underlying” ideas,and are therefore ineligible for patent protection. The latter pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws.”

Based on Business Patent Law’s experience, if your company’s invention(s) are chemical, electrical, electromechanical, mechanical, optical or pharmaceutical, only on rare occasions could the judicial exceptions to patentability potentially manifest.

If you need legal assistance with your company’s Patents or Patent Applications, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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.

Royalties and Taxes

Royalties and Taxation

What are Royalties?

In Revenue Ruling 81-178, 1981-2 C.B. regarding royalties, the Internal Revenue Service stated:

“To be a royalty, a payment must relate to the use of a valuable right. Payments for the use of trademarks, trade names, service marks, or copyrights, whether or not payment is based on the use made of such property, are ordinarily classified as royalties for federal tax purposes.”

Patents, Trademarks & Copyrights are Valuable

Patents, trademarks, and copyrights are valuable. Intellectual property portfolios of Patents, Trademarks and Copyrights are assets of your company and can provide a stream of royalty income for your company.

26 Code of Federal Regulations (CFR) 1.61-8 – Rents and Royalties

CFR 1.61-8, in part reads, “(a) In general. …Gross income includes royalties. Royalties may be received from books, stories, plays, copyrights, trademarks, formulas, patents, and from the exploitation of natural resources, such as coal, gas, oil, copper, or timber.

  • License agreements of Patents, Trademark and Copyrights are contracts that include royalty payments to the owner of the intellectual property.
  • License agreements can have long term benefits for both the licensor and the licensee.
  • Royalty agreements can be difficult to negotiate and understand.
  • It is wise for parties to license agreements to be represented by independent counsels.

Business Patent Law, PLLC does not practice taxation law. However, in view of US federal taxation laws, royalties are generally treated as passive ordinary income.

Under certain circumstances, transfers of Patent rights are treated as capital gains

26 Internal Review Code (IRC) 1235, in part, reads:

(a) General A transfer (other than by gift, inheritance, or devise) of property consisting of all substantial rights to a patent, or an undivided interest therein which includes a part of all such rights, by any holder shall be considered the sale or exchange of a capital asset held for more than 1 year, regardless of whether or not payments in consideration of such transfer are—

(1) payable periodically over a period generally coterminous with the transferee’s use of the patent, or

(2) contingent on the productivity, use, or disposition of the property transferred.

If you need legal assistance with your company’s license-royalty agreements or intellectual property matters, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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.

 

Precise Patent Claims

Patent Claims Must Be Written Precisely

Overcoming the Examiner’s Rejection

The Patent Examiner stated that our claims did not particularly point out and distinctly claim our invention. Can we overcome the Examiner’s rejection?

Whether Applicants can overcome the Examiner’s rejections of the claims, depends on the evidence.

35 U.S.C. 112, in part, reads:

(a)      In General:

The 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.

(b)      Conclusion:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

Be Precise

35 U.S.C. 112 requires Applicants’ claims to precisely claim the subject matter of the invention. When the Examiner argues that the Applicants’ claims failed to particularly point out and distinctly claim the subject matter the inventors regard as the invention, in effect, the Examiner argues that the claim language is unclear or uncertain.

An Unfixable Rejection

Example of an unfixable 35 U.S.C. 112(b) claim rejection: Applicants’ claimed subject matter is not disclosed and enabled in the Specification and Drawings. By way of illustration, Applicants claimed a chair with arms and the Application does not disclose a chair with arms.

A Potentially Fixable Rejection

Example of a potentially fixable 35 U.S.C. 112(b) claim rejection: Applicants used terminology in the claims not utilized in the Specification.

Other examples of fixable 35 U.S.C. 112(b) rejections:

    • Applicants incorrectly numbered the claims
    • Applicants failed to provide an antecedent basis before associating the word “the” or “said” with a claimed structural element
    • Applicants erroneously referenced element 1 of the invention as element number 2 and referenced element number 2 as number 1
    • In a third claim, Applicants referenced a second claim that depended from more than one previous claim
    • Applicants over utilized the conjunctions “and”, “but” or “or”
    • Applicants claimed structural elements are not interconnected

If you need legal assistance procuring your Patents and other intellectual property rights, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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.

Improvement Patents on Spoons

Improvement Patents

Can Improvements on An Existing Patent be Patented? 

There are two key features of Patents and Improvement Patents in the United States:

  1.  The Patent Application must claim an invention is novel over the prior art and
  2.  It must also claim an invention that is non-obvious in the prior art

Basic parameters for an Improvement Patent’s validity in most countries other the United States are:

  1. The claimed invention must be novel over the prior art and
  2. It must have an inventive step, in view of the prior art

In the United States and foreign jurisdictions, one of the attributes of patent counsel is their ability to persuade Patent Examiners that the client’s Patent claims are novel and nonobvious or include inventive step and therefore are patentable.

Can Utility Improvement Patents for a Simple Invention (a Spoon) be granted?

Yes.

For clarity, a utility Patent is based on the invention’s structure and/or function rather than its nonfunctional appearance.  Design Patents would be directed toward ornamentation of a spoon.

Selected Examples of Utility Patents for Spoons from 1899 to the Present

 

1899 – Egg Spoon

 

1899 - Egg Spoon

 

 

1905 – Spoon

 

1905 - Spoon

 

 

1968 – Spoon

1968 - Spoon

 

 

2012 – Musical Spoon

2012 - Musical Spoon

 

2014 – Hair Spoon

2014 - Hair Spoon

It is estimated that spoons with handles have existed for at least three thousand years.  Humans still find ways to modify the basic spoon’s structure to obtain Patents for their new inventions.

If you need legal assistance procuring your Patents and other intellectual property rights or managing your maintenance fees, please contact Business Patent Law, PLLC.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

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.