February 2012
7 posts
2 tags
Should you obtain a patent for your invention?
Patents are popular nowadays. If you invent something “cool” and tell people about it, you’ll likely receive advice that filing for a patent for your invention is the prudent thing to do. However, should you do it?
Before I address the question, I’d like to propose the idea that patent is a luxury. To do this, it’d be best if we both understand what luxury is. From...
1 tag
Seven Sins: Intellectual Property Mistakes... →
The start-up company often is an exciting and fast moving entity. However, without attention to detail involving intellectual property encompassed within the company product and/or service, the time, effort and sweat equity invested in getting that product and/or service to market can slow down, or even halt, company growth. This article looks at seven intellectual property mistakes start-up...
4 tags
Modern Inventions
1-Click, a method and system of shopping on the Internet, is an example of what humans are inventing and patenting in the 21st century. Presumably, humans have already solved all the hard problems. Now, humans want a speedier way of eating the fruits of their labors. I’ll explain the gist of 1-Click in English, i.e., as opposed to in patent language, which can be quite hard to understand....
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PTO's First Fee-Setting Proposal Asks for Big... →
Combined filing, search, and examination fees will rise from $1,250 to $1,840. RCE fee will rise from $930 to $1,700. Notice of appeal fee will rise to $1,500. Appeal to cost an additional $2,500. Total cost of appeal will rise from $1,240 to $4,000. $5,180 to process supplemental examination. $16,120 for subsequent ex parte reexamination. Post-grant procedures and business method challenges...
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PCT Newsletter 2012-02 →
In this issue, you’ll find practical advice for changing the applicant in a PCT application. If the 30-month deadline for national phase entry has not passed, file a request to record the change with the IB under PCT Rule 92bis. If the 30-month deadline has passed, the change of applicant would have to be implemented at the national level according to national laws.
2 tags
US Pat No 8110277 →
Fused silica blank and method of forming fused silica plate from the same, Burdette et al., US 8110277
A method of making a fused silica plate includes providing a fused silica blank having a length, a longitudinal axis, and an outer diameter. The method further includes forming a slot in the fused silica blank which extends from the outer diameter to a location at or offset from a center of the...
2 tags
US Pat No 8110279 →
Method for improving the edge strength of tempered glass sheet articles, Shashidhar et al., US 8110279
A tempered glass sheet article includes a glass sheet having a thickness t, at least one edge, and at least one surface. The at least one edge is connected to the at least one surface by an edge-to-surface corner. The edge-to-surface corner is rounded with a radius r and has a surface...
January 2012
2 posts
4 tags
Patent Prosecution Highway for PCT
A Patent Prosecution Highway (“PPH”) request can be filed at the USPTO in any national stage application, regardless of the nature of the priority claim in the parent Patent Cooperation Treaty (“PCT”) application, provided there is a PPH agreement between the USPTO and the International Searching Authority (“ISA”) used in the PCT application. Presently,...
3 tags
Expediting Patent Examination
The U.S. Patent and Trademark Office (USPTO) offers several programs for expediting patent examination. Here are some examples:
Prioritized Examination (Track I)
Track I can be initiated (i) at the time of filing a patent application, (ii) at the time of filing a request for continued examination in a patent application, or (iii) after filing a request for continued examination (RCE) in a...
December 2011
8 posts
3 tags
1 tag
1 tag
New use of old device
Every now and then, people will discover a new use for an old or known device and wonder if they have invented something that could be patented. The notes below might help.
—Mere application of an old device to a new use does not constitute an invention. Exer-Genie, Inc. v. MacDonald, 453 F.2d 133 (9th Cir. 1972).
—Adaptation of an old device to a new use may constitute invention ...
2 tags
Buyer beware: IP is not just another asset →
There is no doubt that trade-marks, brands, and other trade indicia and intellectual property (“IP”) can be one of a company’s most valuable assets. That does not mean that trade-marks and other IP can be treated like any other asset in the context of an acquisition.
2 tags
End of Inventor's Notebook as Patent Instrument
It used to be that inventors intending to file for patents in the United States were admonished to be meticulous about recording their inventions in hardbound notebooks. The entries had to be dated and signed with a witness on hand. No more. On 16 March 2013, the United States will no longer be a first-to-invent country. For the same claimed invention, the applicant who makes it first to the...
1 tag
What best mode?
With signing of the America Invents Act (H.R. 1246) on 16 September 2011, failure to disclose the best mode in a patent specification will no longer form a basis on which any claim of the patent may be canceled or held invalid or unenforceable. However, the patent specification is still “required” to disclose the best mode of carrying out the invention.
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PCT Newsletter 2011-12 →
Availability of patent applications for licensing to be made available on Patentscope starting in January 2012.
2 tags
Patent Specification
Independent inventors are often very surprised when a patent practitioner tells them it’d cost a couple of thousands to prepare a patent application. I suppose they had gone to the practitioner with the presumption that preparing a patent application is all about filling out forms. No, it’s not all about filling out forms. You’ll get to the forms eventually, but not...
November 2011
4 posts
2 tags
US Pat No 8067883 →
Frit sealing of large device, Wang, US8067883
A hermetically sealed device comprises a spacing unit and a resistive heating element desirably having a closed-loop structure and process for hermetically sealing a device by using such heating element and spacing unit. The frit can form multiple closed-loops to prevent crack propagation. The heating element can be advantageously made of a metal such...
1 tag
Unrestrained and promiscuous grants of patents
The United States Patent Office granted Letters Patent No. 1 to John Ruggles ofThomaston, Maine, on the 13th day of July, 1836. Ruggles’s patent was not the first patent granted by the patent office, but it was the first patent granted by the patent office after the Great Fire of 1836, which destroyed about 10,000 patent records, or after reorganization of the patent office in 1836.
Ruggles was...
2 tags
US Pat No 8058634 →
Method and apparatus for determining sheet position using information from two distinct light beams each at a different position and a different angle, Xin et al., US8058634
A method for determining a position of a selected area of a sheet of material relative to a reference plane includes launching a first incident light beam at the selected area of the sheet of material such that the first...
1 tag
Post-Grant Review
The America Invents Act (H.R. 1246) signed into law by President Obama on 16 September 2011 brings a new procedure, called post-grant review, for challenging the validity of a patent at the U.S. Patent and Trademark Office. Before post-grant review, there was reexamination. Reexamination remains a tool that can be used to challenge the validity of a patent at the Office. The laws governing...
September 2011
2 posts
3 tags
US Pat No 8021999 →
High strength machinable glass-ceramics, Beall, US 8021999
A machinable glass-ceramic consists essentially of, by weight percent on an oxide basis, 35-55% SiO2, 6-18% Al2O3, 12-27% MgO, 3-12% F, 6-25% SrO, 5-20% BaO and 1-5% K2O, wherein the predominant crystalline phase of the glass-ceramic is a trisilicic mica.
(199) The patent application of US 8021999 was prosecuted by the Dewipat Defender...
3 tags
US Pat No 8021999 →
High strength machinable glass-ceramics, Beall, US Patent No. 8021999
A machinable glass-ceramic consists essentially of, by weight percent on an oxide basis, 35-55% SiO2, 6-18% Al2O3, 12-27% MgO, 3-12% F, 6-25% SrO, 5-20% BaO and 1-5% K2O, wherein the predominant crystalline phase of the glass-ceramic is a trisilicic mica.
(199) The patent application of US Pat No 8021999 was prosecuted by the...
August 2011
1 post
2 tags
US Pat No 7988804 →
Material and method for bonding zircon blocks, Addiego et al., US7988804
The invention relates to a method for making large zircon blocks by bonding multiple smaller zircon components together. Zircon particles having a mean particle size of less than 2 microns are impregnated with a solution of titanium-containing material or a sol of titanium-containing material and then dried to form...
April 2011
3 posts
3 tags
US Pat No 7928029 →
Refractory ceramic composite and method of making, Addiego et al., US Patent No. 7928029
A composition for making an isostatically pressed green body includes zircon particles and about 0.1 to 5 wt% of a sintering aid. The zircon particles have a multi-modal particle size distribution including (a) greater than about 40 parts by weight of a coarse zircon component and (b) from about 30 parts to...
3 tags
US Pat No 7928029 →
Refractory ceramic composite and method of making, Addiego et al., US7928029
A composition for making an isostatically pressed green body includes zircon particles and about 0.1 to 5 wt% of a sintering aid. The zircon particles have a multi-modal particle size distribution including (a) greater than about 40 parts by weight of a coarse zircon component and (b) from about 30 parts to about 60...
2 tags
Prior art search on Espacenet
There are many places to search for patent publications without paying a dime. One of my favorites is Espacenet by the European Patent Office. Espacenet boasts a collection of more than 70 million patent documents worldwide. Espacenet offers four direct options for searching for patent publications, i.e., smart search, quick search, advanced search, and number search. With these search options,...
March 2011
3 posts
1 tag
Judicial Exceptions
There are three exceptions to what can be patented in the United States: law of nature, physical phenomenon, and abstract idea. These exceptions are known as 35 USC 101 judicial exceptions because they were created judicially, as opposed to being required by the statute.
35 USC 101 judicial exceptions are stumbling blocks to patenting anything under the sun. But applicants find ways around...
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Steps in getting a patent
Perform a prior art search to find out if the invention is really new and non-obvious.
Prepare a patent application.
File the patent application with the patent office.
Respond to any office actions from the patent office.
Receive a notice of allowance from the patent office.
Pay the issue fee.
Get a patent.
(5)-(7) are not guaranteed. Do (1) to avoid wasting money doing (2)-(4). (2)...
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“Consisting essentially of” is a transition phase commonly used to signal a...”
– PPG Industries v. Guardian Industries, Corp., 156 F.3D 1354.
August 2010
1 post
2 tags
US Pat No 7772182 →
Stable suspension formulations of erythropoietin receptor agonists, Kui et al.,US7772182
A suspension formulation for therapeutic use includes a non-aqueous, single-phase vehicle exhibiting viscous fluid characteristics and having viscosity in a range from approximately 1,000 to 10,000,000 poise. The suspension formulation also includes a particle formulation comprising an erythropoietin receptor...
May 2010
1 post
2 tags
Patent term restoration issues
An FDA approval is required before a new animal drug can be introduced into interstate commerce. The FDA approval occurs in two phases: a testing phase, followed by an approval phase. If there is a patent on the new animal drug, the patent owner may request for extension of the patent term to restore the patent life lost during the duration of the FDA review. The extension that may be...
March 2010
3 posts
1 tag
Copying, inventing, and lying under oath
A patent practitioner writing a patent application usually starts with a very sketchy description of the invention from the inventor and ends up with a very lengthy monograph of the invention. The extra information included in the patent application has to come from somewhere. Typically, the extra information comes from one or more of the following sources: the practitioner’s...
2 tags
Patent term adjustment
(Merchant Making Up the Account, Katsushika Hokusai. Source: Wikimedia Commons)
In Wyeth and Elan Pharma International, Ltd. v. Under Sec. of Commerce for Intellectual Property (Federal Circuit 2009-1120, 7 January 2010), the Federal Circuit visited the question of how to restrict the period of adjustment under 35 USC 154(b)(1) when any of the periods of delay overlap.
35 USC 154(b)(1) offers...
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The blur between practicing and non-practicing...
The term “non-practicing entity (NPE)” is often used to describe an entity that owns a patented invention, does not transform and will not transform the patented invention into an innovation, and has not abandoned the right to exclude others from transforming the patented invention into an innovation. Conversely, the term “practicing entity (PE)” can be used to...
October 2009
1 post
3 tags
Patentability of method of treating humans
In Prometheus Laboratories, Inc. v. Mayo Collaborative Services (Fed. Cir. 2008-1403, decided September 16, 2009), the Federal Circuit found that the asserted claims of the patents in suit meet the transformation prong of the machine-or-transformation test (see Bilski, 545 F.3d 961) and therefore are directed to statutory subject matter.
The two patents involved in the suit are U.S....
August 2009
3 posts
2 tags
How to obtain a patent in 12 months
In a recent report from the United States Patent and Trademark Office (USPTO), the average first action pendency of a patent application for fiscal year 2008 was 25.6 months (up from 25.3 months in fiscal year 2007), and the average total pendency of a patent application for fiscal year 2008 was 32.2 months (up from 31.9 months in fiscal year 2007). For applicants who need a faster response...
1 tag
Researching with an eye for patenting
Suppose that in an experimental study an inventor has found that an element x is critical to a new discovery. The inventor has discovered good results when x has a numerical value of, say, 1. Based on these good results, the inventor submits an invention disclosure to his company’s patent department.
At a later time, a patent practitioner starts the process of converting the invention...
3 tags
"Microsoft was never known for innovation?"
On July 24, 2009, Roy Schestowitz published a blog article with the title “Patents Roundup: Why Microsoft’s Patents are Useless; More Patent Failure News.”
Schestowitz wrote:
Microsoft was never known for innovation, no matter how much it repeated the word “innovation”. Since its early days, Microsoft’s modus operandi was to “copy the product that others innovate, put them into Windows so...
July 2009
2 posts
2 tags
The subtle differences between invention and...
One day, I walked into a Compass Bank to make a deposit or order a foreign bank draft—one or another of those odd tasks I have to do as a business owner—when I saw an ad written in bold white text on a framed, large red panel. The message was simple: the bank has innovative solutions for all my banking needs.
But the ad annoyed me immensely. It seemed to me that I’d seen the word ...
1 tag
Avoiding inventorship conflicts
“Who is an inventor?” is often a tricky question and can be a source of contention when several people work on a particular project that becomes the subject of an invention disclosure, and eventually the subject of a patent application. It is often erroneously assumed that if one contributes in any way to a project, one must be an inventor. But, whether a contributor to a project is an...
May 2009
2 posts
2 tags
Patentability and infringement of...
A product-by-process claim is a mechanism for claiming a product that cannot be adequately described by its structure. A literal reading of a product-by-process claim suggests that an accused product can literally infringe on a product-by-process claim only if the accused product is made by the process of the product-by-process claim. But, prior to the recent decision in Abbott Laboratories...
1 tag
Bilski meets State Street Bank
Recently, I encountered an Office action in which the examiner stated that the claims are patent eligible under § 101 because they pass the machine-or-transformation test but do not recite statutory subject matter under § 101 because they are not directed to a practical application of a judicial exception. The examiner argued that the claims are not directed to a practical application of a...
April 2009
1 post
1 tag
US Pat No 7514149 →
High-strength laminated sheet for optical applications, Bocko et al., US 7514149
A laminated sheet includes a surface layer having an optical surface that is of fire-polished quality and a core layer having a higher modulus than the surface layer to increase an overall stiffness or fracture toughness of the laminated sheet.
(27) The patent application of US 7514149 was drafted by the Dewipat...
January 2009
1 post
2 tags
Limitations of field-of-use limitation
In Ex Parte Gutta (Appeal 2008-3000, decided January 15, 2009), the BPAI found that claims 1 and 3-13 failed the machine-or-transformation test.
Recall that the machine-or-transformation test has two prongs. The first prong involves checking whether the process claim involves use of a specific machine and whether the use of the machine imposes meaningful limits on the scope of the claims.
In...
December 2008
1 post
1 tag
US Pat No 7459095 →
Opaque chrome coating suitable for etching, Bellman et al., US7459095
A method of forming an opaque chrome coating on a substrate includes depositing an opaque chrome coating having three layers on the substrate. The deposition includes depositing an initial chrome layer having a thickness less than 10 nm on the substrate without ion-assist or with undetectable ion-assist, depositing one of...
November 2008
1 post
2 tags
The definitive test for patent eligibility of...
How many tests does it take to determine if a process claim is patent eligible under §101? According to the Federal Circuit, only one two-prong test. In re Bilski, Fed. Cir., No. 2007-1130, October 30, 2008.
Bilski et al. filed a U.S. patent application with claims essentially drawn to a method of hedging risks in the field of commodities trading. The examiner rejected the claims under 35...
June 2008
1 post
2 tags
Clarification of patent eligibility of process...
The Deputy Commissioner for Patent Examination Policy, Mr. John J. Love, has issued a memorandum to the USPTO Technology Center Directors in an effort to clarify processes under 35 USC § 101. In the memorandum, dated May 15, 2008, Mr. Love provided a two-step process for determining patent eligibility of process claims under 35 USC § 101.
The first step in determining patent eligibility of a ...
February 2008
1 post
2 tags
The Perils of Duty of Disclosure
It is no great secret in the patent community that individuals who file and prosecute patent applications in the United States Patent and Trademark Office (USPTO) have a duty to disclose to the Office all known information material to patentability of the application. It is also no great secret that failure to disclose such information during prosecution of the application may render the ...
November 2007
1 post
3 tags
US Pat No 7299657 →
Method of making high strain point glass, Kohli et al., US7299657
A method of forming a glass sheet includes obtaining a preform generated from a glass composition and conveying the preform through a channel having a temperature that decreases along a length of the channel to form a glass sheet having a predetermined width and thickness.
(26) The patent application of US 7299657 was drafted by...