Tag: business strategy

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I Invented a Box Containing Hot Air: Shoot the Moon or File 13?

I Invented a Box Containing Hot Air: Shoot the Moon or File 13?

Similar to the public’s verdict about 1800s’ snake oil salesmen, the colloquialism “selling hot air” generally voices a negative connotation. But until Congress changes Title 35 of the U.S. Code, the ultimate arbiters of patentability are statutory requirements—not public opinion.

To understand how the United States Patent and Trademark Office (USPTO) evaluates an invention, let’s look at four different examples of “a box” to see what lands in the trash can (File 13) and what gets a shot at a patent (Shoot the Moon).

  1. The Unpatentable Box

The Setup: A sealed cardboard box containing nothing other than ambient air at 100 degrees Fahrenheit.

The Verdict: High probability of File 13.

Standard cardboard boxes have been available for hundreds of years, and the statutes dictate that Natural Phenomena—such as ambient air—are not patentable. Simply trapping hot air in a standard container doesn’t cut it.

  1. The “Something Different” 

The Setup: An open-close box containing air, a cushion liner on the inside of the box, and a location tracker.

The Verdict: Possible, but likely File 13.

Under some narrow circumstances, this might be patentable if it features a brand-new location tracker that measures travel speed and position connected to the Cloud. However, there are already numerous tracking devices used by international carriers to move boxes around the globe. Without an additional search of the prior art, this one faces a steep uphill battle.

  1. The Box with Internal Climate Control

The Setup: On the outside, it looks like a standard cardboard box that can be opened, closed, and sealed (cardboard is a cheap insulator). On the inside, the ambient air is actively controlled by a thermal heating and cooling system built into the inner liner. Along with a small vent, the box includes a microcontroller/processor, a mini-heat pump, a voltage supply, a temperature sensor, and tracking module circuitry with a transceiver connected to the Cloud.

The Verdict: High probability of Shoot the Moon!

It’s an integrated system. You aren’t patenting the air or the cardboard; you are potential a novel, man-made utility system that manipulates the internal environment.

  1.  A Very Soft Malleable Blanket

The Setup: On the outside, a durable, protective shell capable of absorbing extreme external shock. On the inside is a harvested donor heart traveling 400-plus miles to a waiting patient. The heart rests in a sterilized, malleable blanket that conforms to its exact shape, preventing it from contacting anything else. The box’s vent includes a microfilter to block pathogens. Alongside the processor, mini-heat pump, voltage supply, and Cloud transceiver, the box includes a supply of saline, a mini-fluid pump, and a layer of graphene contacting each millimeter of the heart’s external surface area.

The Verdict: Ultimate Shoot the Moon!

This is a highly sophisticated, life-saving apparatus with clear, markedly different structural and functional characteristics from anything found in nature. (Note: While highly patentable, you will definitely need FDA certification before introducing it into commerce!)

The Takeaway

Never assume your idea is too simple or too strange to be patentable. As humans, we often lean toward keeping the old rather than embracing the new. We weren’t there, but based on human nature, when the first person put a wheel on a peg, his peers likely laughed at him.

Ironically, we recently watched a documentary about the ten greatest inventions in human history. The wheel did not make the top 10. Something doesn’t seem quite right about that!

At the end of the day, some of the most valuable innovations look like “hot air” to the public until a granted patent proves otherwise.

Ask Us Anything… about Intellectual Property!

Business Patent Law, PLLC is headquartered between Louisville and Lexington, Kentucky, serving a diverse range of clients—from innovative startups to successful companies of several decades whose business interests cause BPL’s practice to span across seventeen time zones.

If you have a topic or question you would like our editorial staff to address, please send us an email. Business Patent Law, PLLC provides intellectual property and business counsel. If you need assistance, contact us today.

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Prepared by the Business Patent Law, PLLC, editorial staff.

 

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Divisional: How One Filing Can Create Two Expiration Dates

Really? Two Expiration Dates? Yes.

The Usual Sequence

The patent examiner declares in the First Office Action that there is more than a single invention disclosed in the parent patent application which allows the filing of a divisional. Before further examination, the examiner requires that the Applicant select a first invention for examination. This is known as a Restriction Requirement.

The Statutory Combo: 35 U.S.C. § 154(b) (PTA) + the § 121 Divisional Safe Harbor

This combination of statutory law allows the extension of a divisional patent application’s term beyond the parent’s twenty-year legal monopoly.

  • 35 U.S.C. § 154(b): Governs Patent Term Adjustment (PTA). As a result of USPTO delays in examination that exceed three years, the PTA adds “bonus life” to the patent term. (Note: Over the years, Business Patent Law, PLLC has seen extensions of four years or more.)
  • 35 U.S.C. § 121: This provides the “Safe Harbor” for divisional applications. It states that a divisional application filed because of a restriction requirement cannot be rejected based on the parent patent for double patenting.

How PTA Calculations Work

The PTA is calculated independently for each application. Depending on the USPTO’s specific delays, the parent and the divisional patent applications are eligible for different PTAs. Upon filing a divisional, its own PTA clock begins.

When a divisional application is filed because the examiner issued a restriction requirement, the USPTO cannot use the parent patent as a reference to reject the divisional for double patenting (and vice-versa). Since you aren’t forced to file a Terminal Disclaimer, every single day of PTA belongs to the owner of the divisional patent.

Turning a Restriction into an Enhanced Asset

  • Multiple Monopolies: In the IP world, distinct but similar inventions are a preferred way of doing business.
  • Stepped Expirations: Staggered expiration dates provided by a divisional make it much more difficult for competitors to “design around” or wait out your protection.
  • Mutually Beneficial: When innovation and engineering are symbiotic, we can precisely select which inventions should be maximized by the PTA and include several of those into the parent application to trigger the divisional process.
  • Too Much Of A Good Thing: Being overzealous can be detrimental if there are too many inventions flowing from the parent application.
  • Management’s Wisdom: Just because you can, does not mean you should. The “good ole days” of “submarine patents” are a vapor in time, but the divisional patent PTA is the law of the land today.

Business Patent Law, PLLC can assist your company with the strategic architecture of parent and divisional patent applications.

Ask Us Anything… about Intellectual Property!

Headquartered between Louisville and Lexington, Kentucky, Business Patent Law, PLLC serves a diverse range of clients—from innovative startups to successful clients of several decades. Our clients’ business interests means BPL’s practice spans across seventeen time zones.

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

Stay up-to-date with news that impacts your business and intellectual property—sign up for Business Patent Law’s Monthly Mailer™ newsletter. If you have a topic or question you would like the editorial staff to address, please reach out.

Prepared by the Business Patent Law, PLLC, editorial staff. Counseling the Creative®

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Should I Have a Holding Company for Intellectual Property?

A holding company is created to hold something, and it’s a business decision that depends on your preferences.

In the Intellectual Property world, these companies (LLC or Corporation) own patents, trademarks, and copyrights. The holding company owns legal monopoly rights. A third party pays the holding company for the rights to practice those monopolies, or the third party can buy the assets outright.

Holding Company Advantages

  • Asset Protection: If your operating company is commercializing the rights of the IP and is sued for infringement, the IP is held safely by your holding company. To own the IP is not an infringement. Likewise, if a defective product suit is the alleged reason for a lawsuit, the owner of the IP is not typically a party to the negligence claim. Additionally, the holding company’s assets are shielded from the operating company’s creditors.
  • Centralized Licensing: If your holding company owns multiple intellectual properties licensed with third parties, it collects all milestones and royalties in one place. This can reduce the paperwork for licensors/licensees.
  • Succession and Sale: Most of the time, it is easier to sell one or more intellectual properties when they are owned by a holding company. Without a clear title, most sales never occur; having the holding company as the sole owner is one of the easiest ways to maintain that clear title. The same principle works when the holding company itself is acquired.
  • Tax Efficiency: I am not a tax attorney, but according to my understanding, in select jurisdictions, a holding company can provide tax advantages.

Holding Company Disadvantages

  • Maintaining the Corporate Veil: This must be done or the advantages, such as shielding from personal liability, are lost. You need clear and distinct business operations and documents for each company. Separate officers or managing members must sign for the company and not for themselves. Not doing so can cause massive heartache.
  • Administrative Overhead: There are more books and more government filings. You are now managing two sets of books, two sets of tax filings, and formal “inter-company” licensing agreements.
  • Government Fees & Forms: Corporations and LLCs are a matter of state law. Each state has its annual fees, forms, and taxes; some states are much more expensive than others. For example, Delaware requires the use of Delaware law firms or organizations to file documents with the state government. For startups, these costs can trump the immediate benefits.
  • The “Arm’s Length” Requirement: Do not commingle the holding company’s and the operating company’s accounts, business agreements, capital, or other funds. The IRS may disregard the entities and “dump” it all into your lap—a mess that is difficult, if not impossible, to fix. Further, in an adversarial proceeding, opposing counsel will want to pierce the corporate veil so that all of your assets are available for judgment.
  • Initial Complexity: Setting this up correctly requires tight coordination between your patent attorney and your tax advisor. A poorly drafted license agreement between your own companies can lead to legal headaches down the road.

Whether to “hold ‘em or fold ‘em” is dependent on your risk-reward tolerance.

Ask Us Anything… about Intellectual Property!

Business Patent Law, PLLC is headquartered between Louisville and Lexington, Kentucky, serving a diverse range of clients—from innovative startups to successful clients of several decades whose business interests cause BPL’s practice to span across seventeen time zones.

If you have a topic or question you would like the editorial staff to address, please send us an email.

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

Stay up-to-date with news that impacts your business and intellectual property—sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Prepared by the Business Patent Law, PLLC, editorial staff.

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I Know It’s Worth A Million!

I Know It’s Worth A Million!

Occasionally, a first-time inventor sits down with Business Patent Law, PLLC (BPL) to discuss a new mechanical or electromechanical invention. Before the hour ends, the excitement usually peaks: “Let me tell you, it’s worth a million!”

It’s an inspiring sentiment, but as a firm that has spent decades in the trenches of intellectual property, a million-dollar idea is only the first brick. To turn that “worth” into “wealth,” you need a foundation that can hold the weight of a business.

The Legal Foundation: The Patent

Before any money is made from your invention, there must be a patent.

  • The Industry Standard: The USPTO’s current allowance rate for mechanical-type applications is approximately 65-70%.
  • The BPL Advantage: Fortunately, BPL’s clients consistently maintain a higher allowance rate than the national average.

However, a granted patent is not a check; it is a legal monopoly right – it means you hold the exclusive rights to make, use or sell. To be “in the money,” the patent must be used in a manner that creates value that can be reduced to cash.

The Million?: Sales vs. Licensing

Once you have the patent, you have two primary paths to your “million”:

  1. Licensing or Selling: This is the path where you rent or sell your rights to a third party. In my 38 years as a patent attorney, only three times, have I seen a third party offer to buy a mechanical invention based solely on the patent only. And, to my knowledge, none of those resulted in a viable commercial deal.
  2. Building the Business: The clients who created truly valuable patents were generally persistent ones. They didn’t wait for a buyer; they started an LLC and began selling the device themselves.

The most successful inventors didn’t just invent a product; they built a customer base. When an LLC reaches a “magic number” in annual sales—proving the market exists—that is when an acquiring company steps in to pay an impressive Return on Investment (ROI).

“Born to Invent”: The 1.5%

Why is the invention path so difficult? Because the innovation “gene” is a rare human trait. Statistics suggest that roughly 1.5% of the population creates the vast majority of inventions. These individuals are a necessary cylinder of our economic engine, but they often face lopsided odds.

While some look to Venture Capitalists (VCs) to bridge the gap, the numbers are sobering. Only about 5-10% of VC deals generate a worthwhile ROI for both the founder and the VC, especially in the high-cost manufacturing world of tangible consumer devices.

The One In A Million Longshot

For a first-time inventor, the “million-dollar” dream is, statistically, a longshot. But world-changing technologies generally start that way. In its earliest days, few people were interested in cell phones—they were bulky, expensive, and lacked the clarity of a landline.

Success requires more than a better idea; it requires serendipity and a legal team you are comfortable with. BPL can write the patent application, suggest architecture for your business, and answer your questions when they arise.

Ask Us Anything… about Intellectual Property!

Business Patent Law, PLLC is headquartered in Nicholasville, Kentucky, serving a diverse range of clients from innovative startups in Lexington and established industry leaders in Louisville, to businesses across the United States and the world.

If you have a topic or question you would like the editorial staff to address, please send us an email.

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

Stay up-to-date with news that impacts your business and intellectual property—sign up for Business Patent Law’s Monthly Mailer™ newsletter.

Prepared by the Business Patent Law, PLLC, editorial staff.

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Patent Applications Unlock Innovation

💡 Patent Applications Unlock Innovation

Patent applications unlock innovation and are one of the most crucial steps an innovator can take to protect an invention and secure its commercial future. It’s more than just paperwork; it’s a strategic business asset that offers significant advantages to individuals and companies alike.

🛡️ Patent Applications Unlock Future Exclusionary Rights

The primary and most powerful benefit of a patent is the exclusive right it grants to the inventor/owner for a limited time. In the United States, that time is 20 years from the first nonprovisional patent application.

  • Preventing Infringement: A granted patent allows you to stop others from making, using, selling, offering for sale, or importing the invention without your permission. This legal monopoly is the bedrock for successful commercialization.
  • Controlling the Market: You gain the power to set prices and control the supply of your patented product or process in the marketplace, which can lead to substantial financial returns.

💰 Patent Applications Unlock Potential Value

A patent transforms an idea into a tangible, valuable business asset that can be leveraged for growth. Some patent applications are exceptional and have value before the patent is granted. Multiple patent applications can unlock the next generation of assets.

  • Licensing and Royalties: You can license the patent to others, generating a steady stream of royalty income without having to manufacture or market the product yourself.
  • Attracting Investment: Patents signal to investors and venture capitalists that your technology is novel and legally protected, making your company a safer and more attractive investment opportunity.
  • Standalone Sale: The owner of the patent can sell to patent to the highest bidder.
  • Increased Company Valuation: For startups and established firms, a robust patent portfolio increases the company’s net worth and provides a stronger position during mergers and acquisitions (M&A).

🚀 Strategic and Competitive Edge

Beyond immediate financial gain, a patent provides a vital competitive advantage in the business landscape.

  • Competitive Deterrent: The existence of the patent can deter competitors from entering your market space, saving costs and headaches of future litigation.
  • Defensive Protection: Patents can also be used defensively. If a competitor sues for infringement, your company’s patents can be used as counter-leverage in negotiations.
  • Public Recognition: The patent document provides public recognition of inventorship, enhancing your company’s reputation as a leader in innovation and technology.

The Takeaway

Don’t leave valuable innovation exposed! Filing a patent application is an essential investment that secures enforceable rights, enhances financial prospects, and a businesses potential for long-term success.  And exceptional patent applications unlock royalty streams before the patent issues.

Ask Us Anything…about Intellectual Property!

If you or your business are 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.

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Exploring the World of Sensory Marks

What are Sensory Marks?

When you think of a brand, what comes to mind? Likely a name, a logo, or perhaps a catchy slogan. These are the traditional trademarks we encounter every day. But in our increasingly immersive world, brands are engaging our senses in entirely new ways, leading to the rise of Sensory Marks.

Sensory Marks are a fascinating category of non-traditional trademarks that appeal to our senses beyond just sight. While challenging to register, they offer powerful ways to distinguish your brand.

Sensory Sound Marks 🎶

This is perhaps the most recognized category of sensory marks. A sound mark is a distinct sound that identifies the source of goods or services. Think of iconic audio cues like the Netflix “Tudum,” the MGM lion’s roar, or the Intel Inside jingle. These sounds aren’t just background noise; they instantly connect you to a brand.

  • Key Challenge: The sound must be inherently distinctive or have acquired distinctiveness through extensive use. Common sounds (like a standard phone ring) are generally not registrable.

Sensory Scent Marks 👃

Imagine walking into a store and recognizing the brand solely by its unique fragrance. A scent mark uses a specific smell to identify goods or services. These are extremely difficult to register due to the subjective nature of smell and the challenge of consistently reproducing a scent. However, successful examples exist, such as the smell of Play-Doh for “modeling compound.”

  • Key Challenge: Describing the scent accurately and demonstrating its non-functional, source-identifying nature is crucial.

Sensory Taste Marks 👅

While incredibly rare, a taste mark would involve a specific, non-functional taste that serves as a brand identifier. The hurdle here is immense: taste is intimately linked with the product itself (e.g., you can’t trademark the taste of an orange for oranges). For a taste to function as a mark, it would likely need to be a unique and arbitrary taste for a product that doesn’t inherently have that taste.

  • Key Challenge: Proving distinctiveness and non-functionality, especially given the inherent functionality of taste in food and beverages.

Motion Marks 🎬

While not strictly a “Sensory Mark” in the same vein as sound or scent (as it relies on visual perception), motion marks are often discussed alongside them as non-traditional marks. These are short animations or sequences of movements that act as a brand identifier. Think of the distinct opening animation of a movie studio’s logo or a specific digital animation that signals a brand.

  • Key Challenge: Clearly defining the sequence of movements and demonstrating its use as a source identifier.

Color Marks (as applied to an entire product) 🎨

Again, strictly visual but often grouped with non-traditional marks due to their unique nature. While a logo containing a color is traditional, a color mark protects a specific color as applied to an entire product or its packaging, acting as a source identifier. Iconic examples include Tiffany Blue for jewelry boxes or UPS Brown for delivery services.

  • Key Challenge: Proving that consumers associate the color alone with the brand, not just as an aesthetic choice. This usually requires significant evidence of acquired distinctiveness.

The Future of Sensory Branding

As technology advances and consumer experiences become more sophisticated, we anticipate even more innovative ways brands will seek to connect with audiences through sensory engagement. Protecting these unique brand assets requires a nuanced understanding of intellectual property law.

If your business is creating a distinctive sensory experience, reach out to Business Patent Law, PLLC. We can help you explore whether your unique brand elements qualify for trademark protection and guide you through the complexities of non-traditional mark registration.

Ask Us Anything…about Intellectual Property!

If you or your business are 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.

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66 Claims: A Tale of Patent Infringement

The 66 Claims

This is a tale of what happened to the 66 claims.

A, B and C were officers and engineers for ABC company located in Cincinnati. In 2022, A, B and C assigned their interests in their joint invention to ABC company. In 2022, ABC company filed the Patent Application in the United States Patent and Trademark Office (USPTO). The original ABC Patent Application had 66 claims.

What Happened With the 66 Claims

In 2024, A and B were playing a best ball golf tournament in Louisville. The other twosome happened to be X and Z, who were officers of XYZ company located in Indianapolis. Before starting the back nine, all players took a break at the clubhouse. By the thirteenth hole, A and B were talking about their joint invention.  X and Z listened closely.

In early 2025, ABC company became aware that XYZ company was selling an XYZ invention that appeared to be identical to the ABC company’s invention. ABC had yet to receive regulatory approval for use of its invention. Somehow, XYZ received regulatory approval and made it to market before ABC.

The 66 Claims of the ABC Company’s Application

In the summer of 2025, ABC received the First Office Action from the Examiner regarding the 66 claims. In the Office Action, the Examiner rejected the first 60 claims of the 66 claims but indicated that the last six claims were allowable if some of the language of those six claims was tweaked. Since A, B and C were engineers and not patent attorneys, A, B and C opted to seek legal assistance.

What Did the Law Firm Do With ABC’s Patent Application?

  • First – the firm determined what product XYZ sold.
  • Second – the firm tweaked the last six claims to make them allowable while at the same time ensuring that those six claims read on XYZ product.
  • Third – the firm filed a Response to the Office Action cancelling the first 60 claims and requesting the Examiner allow the last six claims to mature into a Patent.
  • Fourth – the firm prepared another five Patent Applications claiming priority/benefit to the first ABC Application. Each of those five Patent Applications contained 20 claims.  Three of the Applications were Continuations, and one of those included less structures to achieve the same result. Two of the Applications were Continuation-In-Part Applications that included additional structures that ABC had invented since the filing of the first ABC Company Application.

35 U.S.C. § 120 allows an Applicant to claim the benefit of an earlier Patent Application if the earlier Patent Application is still pending.

What Was the Outcome of the 66 Claims?

  • Before the first ABC Company Application was abandoned, the original first 60 claims morphed into five additional Patent Applications having a total of 100 claims.
  • Original claims 61-66 were the basis for the first Patent. ABC sued XYZ for infringement.
  • Before going to trial and because of the distinct possibility of intentional infringement and treble damages, XYZ agreed to allow ABC to select the infringement damages calculation, e.g., ABC’s losses, such as lost profits or a reasonable royalty, or an accounting of the infringer’s profits.
  • XYZ ceases to use, offer for sale, sale, or make ABC’s patented invention.

Ask Us Anything… about Intellectual Property!

If you or your business are 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.

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Micro Entity and the US Patent Office

What is the Benefit of Being Certified as a Micro Entity?

The United States Patent Office’s (USPTO) fees’ structures are segregated into micro entity, small entity and large entity categories. Government fees for small entities are generally less than other entities’ fees.

USPTO fees periodically change, and it is advisable to check the USPTO website for current rates.

How does an Entity Qualify for Micro Entity Status?

37 Code of Federal Regulations Section 1.29 defines what entities qualify for micro entity status. In part, 37 C.F.R. 1.29 reads as follows:

(a) To establish micro entity status under this paragraph, the applicant must certify that:

(1) The applicant qualifies as a small entity as defined in § 1.27 without relying on a government use license exception under § 1.27(a)(4);

(2) Neither the applicant nor the inventor nor a joint inventor has been named as the inventor or a joint inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid;

(3) Neither the applicant nor the inventor nor a joint inventor, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and

(4) Neither the applicant nor the inventor nor a joint inventor has assigned, granted, or conveyed, nor is under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census.

(b) An applicant, inventor, or joint inventor is not considered to be named on a previously filed application for purposes of paragraph (a)(2) of this section if the applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant’s, inventor’s, or joint inventor’s previous employment.

(c) If an applicant’s, inventor’s, joint inventor’s, or entity’s gross income in the preceding calendar year is not in United States dollars, the average currency exchange rate, as reported by the Internal Revenue Service, during that calendar year shall be used to determine whether the applicant’s, inventor’s, joint inventor’s, or entity’s gross income exceeds the threshold specified in paragraph (a)(3) or (4) of this section.

(d) To establish micro entity status under this paragraph, the applicant must certify that:

(1) The applicant qualifies as a small entity as defined in § 1.27 without relying on a government use license exception under § 1.27(a)(4);

(2)

(i) The applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or

(ii) The applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular application to such an institution of higher education.

(e) Micro entity status is established in an application by filing a micro entity certification in writing complying with the requirements of either paragraph (a) or (d) of this section and signed either in compliance with § 1.33(b), in an international application filed in a Receiving Office other than the United States Receiving Office by a person authorized to represent the applicant under § 1.455, or in an international design application by a person authorized to represent the applicant under § 1.1041 before the International Bureau where the micro entity certification is filed with the International Bureau. Status as a micro entity must be specifically established in each related, continuing and reissue application in which status is appropriate and desired. Status as a micro entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new certification of entitlement to micro entity status for the continuing or reissue application

What is the Maximum Income that Will Qualify Special USPTO Consideration?

As of September 2024 and according to the USPTO, the maximum qualifying gross income for paying the reduced micro entity rate is $241,830. This maximum income limit usually changes in September of each calendar year.

Ask Us Anything…about Intellectual Property!

If you or your business are 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 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.

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US National Stage – Revisited

US National Stage

In the November 6, 2017 post, it was written, “By using this procedure, it is possible for your company to receive the grant of the US Patent before parallel Application filed in other jurisdictions are examined.” Since that date, the USPTO has somewhat altered the time line associated with US National Stage Applications.

Regarding the US National Stage, in the November 6, 2017 post, Business Patent Law, PLLC wrote:

  • Regardless of the nationality of the Patent Applicant, file a Patent Application in the USPTO
  • It best for your company to originally file a Provisional, Nonprovisional or PCT Application in the USPTO — however, if the Provisional, Nonprovisional or PCT Application was first filed in another jurisdiction, a US Nonprovisional Application can be filed in the USPTO until the US statutory deadline has passed
  • If a PCT Application is not the first Application filed, a PCT Application claiming priority to a Provisional or Nonprovisional Application is filed in a PCT Receiving Office (preferably, the USPTO Receiving Office)
  • File a US Nonprovisional Patent Application shortly after the PCT Application was filed, rather than waiting until near the deadline allowed by the PCT
  • By using this procedure, it is possible for your company to receive the grant of the US Patent before parallel Applications filed in other jurisdictions are examined
  • As previously indicated, the grant of a US Patent can expedite the grant of parallel Patents in many foreign jurisdictions

Current Timing for a US National Stage

After the National Stage Application is filed in the USPTO, the length of time before receiving the USPTO “Notice of Acceptance of Application Under 35 U.S.C. 371 and 37 CFR 1.495” is variable. Because of this uncertainty, it is unlikely that the National Stage Application will be granted before parallel applications must be filed in foreign jurisdictions.

If the National Stage Applicant has not received the USPTO “Notice of Acceptance of Application Under 35 U.S.C. 371 and 37 CFT 1.495” after the passage of a reasonable amount of time, contact the USPTO Help Desk to assist with the determination that the US National Stage Application has been properly filed in the USPTO.

Business Patent Law, PLLC’s Observation

Although US law allows the National Stage Applicant to file amended claims with the initial filing of the US National Stage Application, Business Patent Law, PLLC has concluded that it is better to first receive the “Notice of Acceptance of Application Under 35 U.S.C. 371 and 37 CFT 1.495,” and thereafter file the set of amended claims before the first USPTO Office Action.

If you or your company needs assistance with US national, foreign or international Patent Applications, please contact Business Patent Law, PLLC.

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.

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Should You Accept a Trademark Examiner’s Amendment?

Trademark Examiner’s Amendment of Application

A Trademark Examiner’s amendment is sometimes suggested and/or required during examination a US Trademark Application*.

Some Examiner’s amendments will alter the scope of rights associated with a future Trademark Registration. Other Trademark Examiner’s amendments will not modify the scope of rights associated with a future Trademark Registration.

Whether or not to accept the Trademark Examiner’s amendment is a business decision.

Potential Consequences of an Amendment

Applicant’s acceptance of the Trademark Examiner’s amendment generally results in Trademark Registration for the Applicant.

Failure to agree to the Examiner’s amendment can result in:

  • Legal arguments that the Examiner’s suggested amendment is inappropriate
  • A refusal to register the Trademark and the loss of long-term federal rights associated with a US Registration
  • An appeal to the Trademark Trial and Appeal Board where the Applicant can lose the appeal
  • Filing a new Application to register the Trademark, where the new Application is modified from the previously filed Trademark Application

About Section 707 – TMEP – Examiner’s Amendment*

Examples of Section 707 relevant procedures for Trademark Examiners include:

  • An Examiner’s amendment should be used whenever appropriate to expedite prosecution of an Application
  • An Examiner’s amendment is a communication to the Applicant in which the examining attorney states that the Application has been amended in a specified way
  • Except in the situations listed in TMEP §707.02, the amendment must be specifically authorized by the individual Applicant, someone with legal authority to bind a juristic Applicant 700-20 October 2010 (e.g., an officer of a corporation or general partner of a partnership), or the applicant’s qualified practitioner
  • Except in the situations set forth in TMEP §707.02 in which an examiner’s amendment is permitted without prior authorization by the Applicant, an examining attorney may amend an application by examiner’s amendment only after securing approval of the amendment from the individual Applicant, someone with legal authority to bind a juristic Applicant, or the Applicant’s qualified practitioner by telephone, e-mail, or in person during an interview. Cf. 37 C.F.R. §§2.62(b) and 2.74(b)
  • If the Applicant has a qualified practitioner, the examining attorney must speak directly with the practitioner
  • If the Applicant is pro se, the examining attorney must speak directly with the individual Applicant or with someone with legal authority to bind a juristic Applicant (e.g., a corporate officer or general partner of a partnership)
  • For joint Applicants who are not represented by a qualified practitioner, each joint Applicant must authorize the examiner’s amendment

*Along with Trademarks, the USPTO Trademark Manual of Examining Procedure (TME) also applies to Service Mark Applications.

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

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.