patent application possibilities

Patent Application Possibilities

Depending on your company’s intellectual property strategy, there are many Patent Application possibilities.

The Question

Our R&D engineers recently invented improvements for our Company’s Product One.  We have sold Product One for more than a year. The US Patent for Product One was granted six months ago. Can the Company file a US Patent Application for Product Two that includes two structures not part of Product One?

The Answer

It depends on the situation and 35 United States Code 120.

Examples and Possibilities

Patent Application Possibilities  – First Example

  • Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
  • Our Company filed a US Nonprovisional Patent Application disclosing and claiming Product One on June 15, 2020.
  • The USPTO granted our US Patent for Product One on February 9, 2021.

In August 2021, your Company can file a Patent Application for Product Two in the USPTO. However, the USPTO will be able to use the US Patent for Product One to argue against the patentability of Product Two. Unless there are novel and nonobvious structural differences between Product Two and Product One, the USPTO will not grant a Patent for Product Two.

Patent Application Possibilities – Second Example

  • Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
  • Our Company filed a US Nonprovisional Patent Application disclosing and claiming Product One on June 15, 2020.
  • In August 2021, the US Nonprovisional Patent Application for Product One is still pending in the USPTO.

Because the Product One US Nonprovisional Patent Application is still pending, your Company can file a US Continuation-in-Part Nonprovisional Application for Product Two, claiming priority to pending US Nonprovisional Patent Application for Product One. The USPTO cannot effectively use the structures of the Product One Patent Application to reject identical structures in the Product Two Patent Application.

Patent Application Possibilities – Third Example

  • Our Company filed a US Provisional Patent Application disclosing Product One on June 20, 2019.
  • Our Company filed a Patent Cooperation Treaty Patent (PCT) Application disclosing and claiming Product One on June 15, 2020.
  • Our Company filed a US National Stage Nonprovisional Application claiming priority to PCT Application for Product One on August 15, 2020.
  • The USPTO granted our US National Stage Patent for Product One on April 13, 2021.

Pursuant to Title 35 of United States Code and Patent Cooperation Treaty, your Company has until December 2021, to file a US Continuation-in-Part Nonprovisional Application for Product Two claiming priority to PCT Application for Product One.

The USPTO cannot effectively use the structures of the PCT Application for Product One or the April 13, 2021 US Patent for Product One to reject identical structures in the Product Two Patent Application.

35 United States Code 120 Benefit of earlier filing date in the United States

 35 U.S.C. 120, in part, reads:

An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.

For those companies that have a profitable (or potentially profitable) product that is patentable, it is wise to keep a Patent Application pending.  The marketplace decides whether the first generation, the second generation or a subsequent generation product is the most profitable.

Need Help With Securing Your Product Patent?

Business Patent Law, PLLC assists companies and individuals with the procurement and management of their Intellectual Property portfolios. If your enterprise needs legal assistance procuring/managing/enforcing your 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 impacts your business and intellectual property, sign up for Business Patent Law’s Monthly Mailer™ newsletter.

USPTO Notice to Correct Application Papers -Patent Law

Notice to Correct Application Papers

What is a Notice to Correct Application Papers?

The notice means United States Patent and Trademark Office (USPTO) has found an issue with the  filing (the way the paperwork looks, or what’s included in, or a clarification is needed your application) and is asking you to correct them and resubmit. Your time in which to do so is limited, if you want to retain the original filing date (and we know you want to keep that earliest date!)

A Notice to Correct Application Papers can be issued anytime during the pendency of a Nonprovisional Patent Application, but it will usually be sent shortly after your Patent Application is filed.

Your Filing May Be Considered “Informal”

Section 506 of the USPTO Manual of Patent Examining Procedure reads:

“III. INFORMAL APPLICATIONS

An application is informal if it is typed on both sides of the paper, or is not permanent, legible, or reproducible. If such informalities are timely corrected, the application is given the filing date on which the original informal papers were filed.

OPAP accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP 505), to application papers which include a specification containing a description and at least one claim (nonprovisional applications filed under 37 C.F.R. 1.53(b) prior to March 18, 2013 and design applications), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 C.F.R. 1.53(b), but are informal because they do not comply with the rules or notices. In such applications, OPAP will send a Notice (e.g., Notice to File Corrected Application Papers) requiring correction of the informality. Failure to correct the informality within the specified time results in abandonment of the application.”

Case Study: The Situation

  • Our company’s Dallas R&D department filed a US Provisional Patent Application for one the company’s electromechanical gadgets. Before the expiration of the Provisional Patent Application, our company filed a US Nonprovisional Patent Application claiming the benefit of the US Provisional Application. Our in-house patent attorney located at our principal office in Houston had previously used this strategy to procure several US Patents.
  • Among other things, the Nonprovisional Patent Application included: an Abstract, Claims, a Specification and black and white line Drawings.
  • After filing the Nonprovisional Application, the USPTO generated a Notice to File Missing Parts because one of the inventor’s Declarations was missing from the as-filed Application. After receiving the Notice to File Missing Parts, our in-house counsel timely supplied the missing inventor’s Declaration to the USPTO.
  • Over the subsequent three and one-half years, our in-house counsel argued back and forth with the Patent Examiner, and eventually, the Examiner issued a Notice of Allowance for our electromechanical gadget Nonprovisional Patent Application.
  • More than a month after receiving the Notice of Allowance, the Examiner issued a Notice to File Corrected Application Papers.

Our Company’s Notice to Correct Application Papers

The Notice, in part, read:

“Notice of Allowance Mailed

This application has been accorded an Allowance Date and is being prepared for issuance. The application, however, is incomplete for the reasons below.

Applicant is given two (2) months from the mail date of this Notice within which to respond. This time period for reply is extendable under 37 CFR 1.126(a) for only two additional MONTHS.

The informalities requiring correction are indicated in the attachment(s). If the informality pertains to the abstract, specification (including claims) or drawings, the informality must be corrected with an amendment in compliance with 37 CFR 1.121…

Figure numbers are missing or duplicated. FIGS 21-24.”

Notice to Correct Application Papers: Our Next Steps

Since our company had never received a Notice to Correct Application Papers, we looked to a law firm to manage this matter for us. Amended Drawings were filed and the Patent issued in due course.

Do You Need Help From a Lawyer Specializing in Patent Law?

If you have received a Notice to Correct Application Papers, or have other questions or concerns about filing and protecting your intellectual property, we are here for you. General or in-house counsel is great for many of the legal questions or tasks your company may need, but questions about working with the Patent and Trademark Office and responding to their notices, may require someone with more specialized experience.

Protect Your Valuable Intellectual Property

If your enterprise needs legal assistance procuring/managing/enforcing your Patent Applications, Patents of 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.

Interview with Patent Examiner by Video Conference

Your Patent: Office Actions and Examiner Interviews

Office Actions

The Patent Offices of the various jurisdictions around the world issue Office Actions. These actions indicate many things, including the status of the Patent Application. An Office Action reflects the current opinion of one or more Patent Examiners regarding a Patent Application.

Types of Office Actions for Pending Applications

  • Filing Receipt
  • Notices of Abandonment
  • Notices of Allowance
  • Notices of Publication
  • Notice to Correct Application Papers
  • Patent Cooperation Treaty Information
  • Payment of Additional Governmental Fees
  • Substantive Examination by Examiners

What is a Substantive Examination by the USPTO?

A USPTO Substantive Examination Office Action generated by an Examiner’s can include:

  • Under 35 U.S.C. 101, the Examiner concludes if the Application is directed to patentable subject matter
  • Under 35 U.S.C. 102, the Examiner opines if one or more of the claims of the Application are novel
  • Under 35 U.S.C. 103, the Examiner can argue if one or more of the claims of the Application are obvious in view of the prior art
  • Among other things, under 35 U.S.C. 112, the Examiner determines if the Specification enables one in the art to practice the invention and whether the claims particularly point out and distinctly claim the subject matter the Applicant regards as the invention

Applicant Interviews with the Examiner

The USPTO allows Applicants (or their representatives) to conference with Examiners. These conferences can simplify 35 U.S.C. 101-103 and 35 U.S.C. 112 matters propounded by the Examiner and streamline the Applicant’s prosecution and the Examiner’s examination of the Patent Application. Over the years, it is Business Patent Law’s experience that verbal communication between the Examiner and Applicant’s attorney can assist both sides in better understanding the opposing side’s arguments.

Types of Applicant Interviews

There are three primary types of applicant interviews with the examiner for these pending office actions:

  • In-person
  • Telephone conference
  • Video conference

Some USPTO Examiners require the Applicant to use the USPTO Automated Interview Request system to schedule an interview.

Have Questions About Office Actions?

If you need legal assistance in responding to the USPTO Office Action for your Patent Application, please contact Business Patent Law, PLLC. Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies.

In the meantime, 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.

Racing to the Patent Line - Priority Date Filing USTPO

What is a Priority Date for Patents?

The priority date, under US law, is the filing date of the first Patent Application (Provisional or Nonprovisional) to which a Nonprovisional Patent Application claims benefit. Depending on the facts of each case, the claim of priority must be established prior to the expiration of the Provisional Application, abandonment of the Nonprovisional Application, or the grant of the Patent.

Why is a Patent’s Priority Date a Big Deal?

Among other things, the USPTO can only use references that were available prior to the priority date to reject the claims of the Nonprovisional Patent Application.  In other words, the USPTO cannot use inventions filed after this priority date to reject the claims of a Nonprovisional Patent Application. So if a competitor invents something while you are waiting for the Patent Office’s review, the earlier the filing date or priority date, the less prior art the Examiner can use to reject your Patent Application.

This matters because it may be two, four, or more years after you file your Nonprovisional Application before the USPTO starts detailed examination of your application.

What If I Made Earlier Filings?

A Nonprovisional Patent Application can claim the benefit of an earlier Provisional Application or a previously filed Nonprovisional Application. If a Nonprovisional Patent Application doesn’t claim the benefit of a Provisional Application or priority based on a previously filed Nonprovisional Application, the priority date is the filing date on the original Nonprovisional Patent Application.

What the US Code Says

35 United States Code (U.S.C.) 120

35 U.S.C. 120, in part reads, “An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application…”

35 U.S.C. 119(e)

35 U.S.C. 120(e), in part reads, “(1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application…”

Examples: How Priority Date for Patent Applications Works

  • Our Provisional Application was filed July 4, 2020 and on January 15, 2021 our company files a Nonprovisional claiming the benefit of our Provisional Application. The priority date is July 4, 2020.
  • Our company filed a Nonprovisional Application on March 15, 2020. We opt to file a PCT Application. The priority date is March 15, 2020.
  • The Provisional Application was filed on September 15, 2019. Our company filed a Nonprovisional Application on September 12, 2020 claiming the benefit of the Provisional Application. Our engineers invented an improvement to the invention that was disclosed in the Nonprovisional Application but not in the Provisional Application. We opted to file a Continuation Nonprovisional Application. The priority dates are September 12, 2020 for the improvement and September 15, 2019 for the remainder of the invention disclosed in the Provisional Application.
  • Our company filed a Provisional Application directed to a mousetrap on January 12, 2017. On January 9, 2018, we filed a PCT Application directed to the mousetrap. In March 21, 2019, our engineers invented a device for use with the mousetrap. The device is used for sampling the DNA of the mouse restrained in the mousetrap. On May 15, 2019, the company files a US Continuation-in-Part Application claiming both the mousetrap and the device for sampling DNA. The priority dates are January 12, 2017 for the mousetrap and May 15, 2019 for the device for sampling DNA.

Business Patent Law, PLLC provides intellectual property and business counsel for businesses and companies. If you need legal assistance in preparing Patent Applications, 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.

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.

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.

covid19 response

COVID19 Office Response

Our offices remain open and serving clients. We have only made a few changes to the way we do business. We are able to work with you by phone and email, as always, but are not meeting in person at this time. This is to protect our clients and staff. It will not impact the quality or timeliness of your service and we intend to keep your matters on track and on time.

Since our practice is primarily of national and international scope, changes in operations in the various state court systems will not likely impede most matters managed by us.

Federal Courts and the United States Patent and Trademark Office (USPTO) made some changes to standard operating practices. For example, USPTO offices are closed to the public and some petition fees may be waived and extensions of certain patent and trademark deadlines may be possible. In-person oral hearings and meetings with USPTO employees are not possible at his time.  However, for years, Business Patent Law has used digital technologies to communicate with the USPTO, other federal agencies and our foreign clients and associates.

If you want to know how this impacts your intellectual property and business concerns, please contact us and we can discuss it.

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.