Tag: Patents

USPTO Inventor's Oath or Declaration Requirement

Notice Requiring Inventor’s Oath or Declaration

The USPTO can issue a Notice Requiring Inventor’s Oath or Declaration that requires action by the Applicant. Failure of the Applicant to respond will cause the Patent Application to become abandoned.

Basic Requirements for a US Patent Application

An Inventor’s oath or declaration is one of the requirements for filing a US Patent Application. Basic minimum requirements for filing a US Patent Application include:

  • Specification
  • Drawings
  • At least one claim
  • Application Data Sheet
  • Inventor’s Oath or Declaration
  • USPTO fees – NOTE: It is less expensive to pay the required USPTO fees on the day the Application is filed

An Example of Oath/Declaration Problems

The given name of the inventor was William.  However, William generally used the name Will in his business.  Will also used the name Will on his federal income taxes.

With the filing of the Patent Application, in the Inventor’s Declaration, the name William was used.  However, in the Application Data Sheet, the name Will was utilized.

The Scenario that Unfolded

Will’s Patent Application was examined and approved by the Examiner. A Notice of Allowance was issued. Will was very happy he was going to be granted his first US Patent.

Several days after receiving the Notice of Allowance, Will received a USPTO Notice Requiring Inventor’s Oath or Declaration. Will contacted Business Patent Law about his dilemma.

The Solution to the USPTO Notice

  • William can file an amended Application Data Sheet indicating his name is William or
  • Will can file a substitute Inventor’s Declaration changing the name to William

Of course, the USPTO charges a small fee for making either one of these corrections.

The Takeaway

When comes to an inventor’s given name and surname, the USPTO demands precision.

Based on information provided to BPL by our IRS and Social Security affiliates, it appears it does not matter if William or Will is utilized for those agencies as long as the social security number is identical.

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Election Requirements for Patents

Election Requirement

What is a USPTO Election Requirement?

Before the Patent Examiner examines the Application on its merits, the Examiner can generate an Election Requirement causing the Applicant to select a first group of claims for first examination.

The Examiner generates a USPTO Office Action that includes wording similar to:

“The Application contains claims directed to the following patentably distinct species:

  • Group 1: Claims 1-5 and 15-20, drawn to invention Z1, shown in figures 1-10.
  • Group 2: Claims 6-14, drawn to invention Z2 shown in figures 11-17.
  • Group 3: Claims 21-27, drawn to invention Z3 shown in figures 18-27.”

“Applicant is required under 35 U.S.C. 121 to select a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.”

“There is a serious search and/or examination burden for the patentably distinct species as for above because at least the following reason(s)…”

Election Requirement – Statutory Law

35 United States Code 121 reads, “If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.” [Emphasis by BPL].

Observations Regarding Divisional Applications

  • In view of the Election Requirement, the Applicant elects a first group of claims for first examination
  • Although an Applicant can argue against the Examiner’s Restriction Requirement, it is generally not cost-efficient for an Applicant to make such an argument
  • After the election of the first group of claims, in due course, the Examiner will issue an Office Action regarding the patentability of the elected claims
  • When the original Application has allowable claims, to receive the benefit of the original filing date, any Divisional Application to be filed, must be filed before the Patent for the original Application is granted
  • A Divisional Application can be filed at any time prior to the Patent grant flowing from the original Application

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

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

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USPTO National Stage Application - US Patent Lawyer

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.

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Pumpkin Related Patents - Halloween 2024 - Blog

Patents for Pumpkin Inventions

Inventors Receive Patents for Inventions Involving Pumpkins

In 2024, US Halloween related purchases are anticipated to exceed 11 billion dollars. Some merchants expect to capture a portion of those sales. Below are four examples of pumpkin-related patents.

Examples of Patents for Inventions Involving Pumpkins:

  • On September 15, 1927, John Schmidt of Hoopeston, IL filed for a patent for a Pumpkin Steamer (see PDF). The patent was granted on August 15, 1933.
  • On March 28, 1997, Robert K. McClung of Baltimore, MD filed for a patent for a Pro Pumpkin Carver (see PDF). The patent was granted on July 14, 1998.
  • On August 24, 2000, John J. McAdam of Reading, PA and Emerson M. Reyner, II of Palmyra, PA applied for a patent for a Pumpkin Stand (see PDF). The patent was granted, subject to a terminal disclaimer, on July 23, 2002.
  • On October 3, 1996, Jeffrey A. Chapman of Scottsdale, AZ applied for a patent for a Carvable Artificial Pumpkin (See PDF). The patent was granted on September 22, 1998.

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

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

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The Patent Exhaustion Doctrine - Monsanto Case on GMO Soybeans

The Patent Exhaustion Doctrine

When does the Patent Exhaustion Doctrine Apply?

In the US Supreme Court case of Bowman v. Monsanto Co., 569 U.S. 278 (2013), the Court set forth some thresholds for the application of the Patent Exhaustion Doctrine.

The Monsanto Facts

Monsanto invented a genetic modification that enables soybean plants to survive exposure to glyphosate, the active ingredient in many herbicides (including Monsanto’s own Roundup). Monsanto markets soybean seed containing this altered genetic material as Roundup Ready seed. Farmers planting that seed can use a glyphosate-based herbicide to kill weeds without damaging their crops. Two patents issued to Monsanto cover various aspects of its Roundup Ready technology, including a seed incorporating the genetic alteration.

Monsanto sells, and allows other companies to sell, Roundup Ready soybean seeds to growers who assent to a special licensing agreement. That agreement permits a grower to plant the purchased seeds in one (and only one) season. He can then consume the resulting crop or sell it as a commodity, usually to a grain elevator or agricultural processor. Under the agreement, the farmer may not save any of the harvested soybeans for replanting, nor may he supply them to anyone else for that purpose.

The Bowman Facts

Bowman, an Indiana farmer, devised an approach for his second crop of each season. Because he thought such late-season planting “risky,” he did not want to pay the premium price that Monsanto charges for Roundup Ready seed. He therefore went to a grain elevator; purchased “commodity soybeans” intended for human or animal consumption; and planted them in his fields. Those soybeans came from prior harvests of other local farmers. And because most of those farmers also used Roundup Ready seed, Bowman could anticipate that many of the purchased soybeans would contain Monsanto’s patented technology.

When he applied a glyphosate-based herbicide to his fields, he confirmed that this was so; a significant proportion of the new plants survived the treatment, and produced in their turn a new crop of soybeans with the Roundup Ready trait. Bowman saved seed from that crop to use in his late-season planting the next year—and then the next, and the next, until he had harvested eight crops in that way. Each year, that is, he planted saved seed from the year before (sometimes adding more soybeans bought from the grain elevator), sprayed his fields with glyphosate to kill weeds (and any non-resistant plants), and produced a new crop of glyphosate-resistant—i.e., Roundup Ready—soybeans.

In his defense, Bowman argued the Patent Exhaustion Doctrine.

The Bowman Court’s Holding on the Patent Exhaustion Doctrine

On Page 289 of Bowman, Justice Kegan wrote, “Our holding today is limited—addressing the situation before us, rather than every one involving a self-replicating product. We recognize that such inventions are becoming ever more prevalent, complex, and diverse. In another case, the article’s self-replication might occur outside the purchaser’s control. Or it might be a necessary but incidental step in using the item for another purpose…We need not address here whether or how the doctrine of patent exhaustion would apply in such circumstances. In the case at hand, Bowman planted Monsanto’s patented soybeans solely to make and market replicas of them, thus depriving the company of the reward patent law provides for the sale of each article. Patent exhaustion provides no haven for that conduct. We accordingly affirm the judgment of the Court of Appeals for the Federal Circuit.”

If your company needs assistance with its Patent Applications, please contact Business Patent Law, PLLC.

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

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European Unitary Patent

What Is the European Unitary Patent?

The European Unity Patent, which came into effect on June 1, 2023, is a way to have a single patent cover multiple countries. As of September 1, 2024, it is expected that eighteen European countries will participate in the Unitary Patent System. In the future it is anticipated twenty-five European countries will participate.

Where Do I File?

A request for a Unitary Patent commences in the European Patent Office.

What are the European Patent Office’s Costs of Filing a European Unitary Patent?

It is estimated that the current cost of filing for a Unitary Patent is approximately 2000 Euros plus VAT, if any.  (This less than the traditional manner of validating a European Patent in selected jurisdictions.)

Which European Countries Currently Participate in the Unitary Patent System?

  • Austria
  • Belgium
  • Bulgaria
  • Denmark
  • Estonia
  • Finland
  • France
  • Germany
  • Italy
  • Latvia
  • Lithuania
  • Luxembourg
  • Malta
  • Netherlands
  • Portugal
  • Romania
  • Slovenia
  • Sweden

Which European Countries will Not Participate in the Unitary Patent System?

Switzerland and the United Kingdom are not members of the European Union and they participate only with the traditional validations of European Patents.

If your company needs assistance with its European Patent Applications or Patents, please contact Business Patent Law, PLLC.

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

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

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Codes used by the US Patent office

Letter Codes for US Patents

Letter Codes for US Patents & Published Patent Applications

Commencing on January 1, 2002, letter Codes were added to United States Patents.

In 2002, the United States Patent and Trademark Office (USPTO) began publishing Patent Applications that included letter Codes.

Some of the Letter Codes Used by the USPTO

Letter Code                    Document Type

A                                      Utility Patent Grant issued prior to January 2, 2001

A1                                    Utility Patent Application published on or after January 2, 2001

A2                                   Second or subsequent publication of a Utility Patent Application

A9                                   Correction published Utility Patent Application

Bn                                   Reexamination Certificate issued prior to January 2, 2001

B1                                   Utility Patent Grant without pre-grant publication issued on or after January 2, 2001

B2                                   Utility Patent Grant with pre-grant publication issued on or after January 2, 2001

Cn                                   Reexamination Certificate issued on or after January 2, 2001

E                                      Reissue Patent

S                                      Design Patent

If your company needs assistance with its intellectual properties, contact Business Patent Law, PLLC.

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

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Claim terms in Patent documents

Patent Application Words Meaning

The Broadest Reasonable Interpretation

The words (or terms) used to outline and describe the claims of your patent application may be interpreted differently by different people. How is this resolved by the USPTO?

During USPTO examination, the Patent Application words (meaning of the claims term) must be “given their broadest reasonable interpretation consistent with the specification,” as per Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005).

The broadest reasonable construction of the claims is determined “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).

According to the USPTO Manual of Patent Examining Procedure, “The broadest reasonable interpretation does not mean the broadest possible interpretation. Rather, the meaning given to a claim term must be consistent with the ordinary and customary meaning of the term (unless the term has been given a special definition in the specification), and must be consistent with the use of the claim term in the specification and drawings. Further, the broadest reasonable interpretation of the claims must be consistent with the interpretation that those skilled in the art would reach.”

The Patent Application in Plain Words

Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time.

“The Greatest clarity is obtained when the specification serves as a glossary for the claim terms”

The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is obtained when the specification serves as a glossary for the claim terms. The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).

“[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp.

The USPTO Manual of Patent Examining Procedure, in part, reads, “The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification – the greatest clarity is obtained when the specification serves as a glossary for the claim terms.”

Patent Application Words Meaning – Explicit Definition

Where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim, as per Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999)

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

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

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Christmas Patent Products

Patents for Christmas Inventions

Do Investors Get Patents for Christmas Inventions?

Yes, many inventors receive patents for Christmas inventions!

In 2023, US Christmas sales are anticipated to exceed 950 billion dollars. Christmas inventions are a portion of this market. Some inventors hope to seize a portion of those sales.

Examples of Christmas Themed Inventions

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

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

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

Replacement Drawings After a Notice of Allowance?

Can the USPTO Require Replacement Drawings?

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.

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

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

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