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

Replacement Drawings Subsequent to the Notice of Allowance?

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.

Patent drawings for replacement drawings after notice of allowance

Replacement Drawings for Utility Patent Applications

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

Notice to File Corrected Application Papers for Patent

 

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.

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.

Golf-Experts-Legal

Legal Experts For Golf?

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!

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.

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.

Pet Product Patents

Pet Care Patents In The United States

Pet Care Patents

Pet lovers are often the inventors of pet care products and many seek pet care patents for their inventions. In addition to improving the lives of pets, these inventors hope to make a profit from their inventions. How popular are these inventions? According to the United States Patent and Trademark Office database, there are more than 2000 Patents having the word “dog” in the title of the Patent.

Potential Market for Pet Care Patents

People love their pets, whether they are dogs, cats or another type of animal. As a result, the pet care industry is big business! In the United States in 2020, it is estimated that over $100 billion US dollars were spent in the pet industry.

Three Fun Pet Care Patents

Below are three examples of pet care product patents for your review. One is for automated petting, one is for automated watering and the last is a tool to help with the dog-walking chore. These products were selected at random from the thousands of patents that have been issued for pet care products in the United States.

1.) A scratching and petting device for pets

2) A pet watering device

3) A device to assist pet walking

USPTO Utility Patent Basics

Like any other type of utility Patents, the pet care inventor must comply with the following sections of the Title 35 of the United States Code (U.S.C.):

35 U.S.C. 101 – Patentable Subject Matter

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 therefore, subject to the conditions and requirements of this title.

35 U.S.C. 102 – Novelty

In part, 35 U.S.C. 102 reads: A person shall be entitled to a patent unless— (1) The claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or  (2) The claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

35 U.S.C. 103 – Non Obvious Subject Matter

A patent for a claimed may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

35 U.S.C. 112 – Specification

In part, 35 U.S.C. 112 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.

We hope you enjoyed reading about the pet product patents! If your enterprise needs legal assistance procuring/managing/enforcing your pet product Patent Applications, Patents, Copyrights or 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 affects your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

suspended trademark next steps

Trademark Suspension Notice: How to Handle

The Trademark Suspension Situation

Our Company has been using our Trademark for Years. Our General Counsel filed an In-Use Federal Trademark Application. We just received a Suspension Notice from the Trademark Examiner.

  • During the Application phase, regardless of your Company’s alleged prior use, the Examiner can suspend your Company’s Trademark Application
  • With regard to Trademark Applications filed in the USPTO, until the subsequent Applicant proves otherwise, the first Applicant to file has superior procedural rights, and potentially, superior substantive rights
  • When a Trademark Application is suspended, the Examiner takes no further action on the suspended Application until proof of certain evidentiary conditions cause the Examiner to resume examination of the suspended Application
  • In some situations, multiple Applicants’ Applications can be suspended for a period of years

Receiving a Trademark Suspension Notice

A United States Patent and Trademark Office (USPTO) Suspension Notice of a pending Trademark Application looks something like the following:

SUSPENSION NOTICE

No Response Required

Issue date:  December 15, 2020

The application is suspended for the reason(s) specified below.  See 37 C.F.R. §2.67; TMEP §§716 et seq.

USPTO database searched; prior-filed potentially conflicting pending application(s) found.  The trademark examining attorney searched the USPTO database of registered and pending marks and found no conflicting registered marks that would bar registration under Trademark Act Section 2(d).  15 U.S.C. §1052(d); TMEP §704.02.  However, a mark(s) in a prior-filed pending application(s) may bar registration of applicant’s mark.

The pending application(s) below has an earlier filing date or effective filing date than applicant’s application.  If the mark in the application(s) below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark(s).  15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §1208.02(c).  Action on this application is suspended until the prior-filed application(s) below either registers or abandons.  37 C.F.R. §2.83(c).  Information relevant to the application(s) below is provided in this letter.

– U.S. Application Serial No(s). ????????

Suspension process.  The USPTO will periodically check this application to determine if it should remain suspended.  See TMEP §716.04.  As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension.  TMEP §716.05.

What can our Company do to Advance our Application?

  • Accumulate evidence about the Applications involved with the suspension
  • Seek competent intellectual property counsel
  • Determine best options for success in advancing the Company’s Application toward a Federal Registration
  • In the United States, before the USPTO grants a Registration, the Applicant must provide evidence of either interstate or international use of the Mark
  • Trademark Suspension Notices can create a convoluted path to federal Registration

Need More Help?

Business Patent Law, PLLC represents and has represented clients owning suspended Trademark Applications before the USPTO. If you need legal assistance in preparing and prosecuting and Patent and Trademark Applications, please contact Business Patent Law, PLLC.

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

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.

Entrepreneurs Small Business Startup Advice

Advice for Entrepreneurs and Small Businesses

Entrepreneurs and Small Businesses

In the United States there are approximately 29,000,000 small businesses. Most of these small businesses are founded by one or more entrepreneurs. One US Small Business Administration (SBA) measure for defining a small business is: a small business has 500 or fewer employees. According to the SBA, of these 29 million small businesses, approximately 23,000,000 small businesses do not have any employees.

In the United States, approximately one-half of all jobs are supplied by small businesses, so there is a correlation between more small businesses and increased availability of jobs.

Entrepreneurs Create Small Businesses

First, the entrepreneur conceives the invention/product/service and/or business model. Then that entrepreneur will develop a method to commercialize the invention/product/service. According to the SBA, each year more small businesses “are birthed than die.” Over the years, BPL has witnessed entrepreneurs who fail to realistically approach the problem of anti-commercialization forces that result in the death of small businesses. At the same time, those entrepreneurs who do persist can create small businesses that have 100 or more employees with annual sales of 200 million dollars or more.

The owners of a $200MM small business usually have a group of trusted advisors in place, but what about startups?

Entrepreneur Advice and Startup Considerations

If you are one of the 23 million small business owners, entrepreneurs or start-ups, you should:

  • Think and rethink the invention/product/service
  • Discover competitors and discern how your invention/product/service is different – your market niche is likely narrower than you originally thought
  • Determine how to make a profit in your niche market
  • Seek and listen to the advice of other successful small business owners
  • File Intellectual Property Applications – if your market and price point(s) justify the filings
  • Patents owned by startups provide the owners a limited monopoly to prevent others from making, using, offering for sale or selling their patented invention
  • Investors appear to like small businesses with Intellectual Property portfolios
  • Prepare a business plan
  • Commence assembling your team of trusted advisors – mentors first – then accountants, attorneys, engineers, insurance professionals, investors, lenders, and scientists, etc.

Many small business owners reap large financial rewards when the small businesses are sold to a third party.

Get Help With Your Small Business Venture

Business Patent Law, PLLC would like to assist you with your small business or Intellectual Property needs.  Please contact Business Patent Law, PLLC and we will discuss possibilities for your business.

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