An invention will not be patentable if made by others or made by another in the US before the date of invention- This is interference practice under the old rules.

Interferences

What questions are asked when determining who wins an interference?

Interferences are dead but they could still be declared because there are still applications under the old rules that are still pending.

Interference: When does conception occur and when do I have a reduction to practice.

What is the reduction to practice?

How is this related to Diligence?

When does the date of invention occur under this?

How does this relate to determing who first invented soemthing?

Can the person take breaks?

What if everyone is diligent

A reduction to practice can

1) Be constructed and a Constructed reduction to practice occurs when the application is filed.

2) Actual reduction to practice means that an actual prototype has been created.

Between conception and reduction to practice there is diligence

Conception is the idea/the light bulb in your head and you have to have enough of the details in your head to actually make the invention.

Diligence is when you play around with the invention to create the exact formula, etc.

The Date of invention encompasses all of these activities because it takes time to create it

So the party who is the first to conceive and to reduce the invention to practice is the first to invent

But if at some point A had a break in diligence and did not work on the invention for a while and then we would start counting from the date A restarted their diligence. So if this diligence was picked back up after B conceived their invention, then B would obtain the patent.

So if everyone is diligent, whoever comes up with the idea first, then they get the patent.

There is no definitive answer for what makes a break a break because you can take vacations, etc. You just need to work on it regularly.

35 USC §103 

Non-Obviousness under first to file rules?

What case is related to this?

If we are going to give you these exclusionary rights, it needs to be some sort of definite invention.

The one case that defines non-obviousness is Graham v. John Deere, 282 U.S. 1 (1966)

Under Graham v. John Deere, 282 U.S. 1 (1966), hos is non-obviouness determined?

1) Assess the scope of the invention- What is it that I invented

2) Asses the differences between what I invented and the prior art- or how is it that my invention differs from the prior art; how is this different from anything that was done before.

3) Assess the level of skill in the art- it takes some skill to create it; use your gut reaction; think about it in the terms of effort, the greater the amount the effort required; the more likely it will require some skill in the art

4) Asses secondary considerations- these are factual analyses;. There are lots of these and just recognize that these are a way for the law to take something that is subjective and make it objective.

So as a secondary consideration the court will look at a) praise from other people in that field who say it’s awesome

b) Long felt but unsolved need- if there was a need to fix an issue and no one could figure out how to do it, then it suggests that the invention is non-obvious because you solved the problem that no one before you could solve I t.

c) Copying- if after you introduce the invention then everyone else starts copying it, this would suggest it is non-obvious because they would come up with their own way of doing it.

What are the New post 3/16/13 rules when dealing with novelty?

What's the driver for the new rules?

What are the exceptions to the new rules

No patent if 1) the invention was patented (or published), 2) was in public use 3) was on sale, or 4) publically available; and this is from anywhere in the world before the filing date.

Under the new rule everything deals with the application date, then you won’t get a patent if anything of these things happen before the application date.

It’s ok (i.e. you can still get a ptent) if it’s

1) the applicants own publication

2) Applicant’s own disclosure or

3) that is was derived from the applicant (i.e. you tell one person and then they tell the world because it was derived from me) ……so long as it is less than one year before the filing date (this is for all of the exceptions)

It’s ok (i.e. you can still get a ptent) if it’s

1) the applicants own publication

2) Applicant’s own disclosure or

3) that is was derived from the applicant (i.e. you tell one person and then they tell the world because it was derived from me) ……so long as it is less than one year before the filing date (this is for all of the exceptions)

1) The experimental use exception- experimental use is still available if you avail yourself of experimental public use that goes on longer than a year. (Only one that can get you past a year)

2) On sale bar- have to get it to the patent office within one year of offering it on sale is the same.

You have to get it to (i.e. apply for a patent) the patent office within one year of offering it on sale or else you won't get a patent

103 (non-obviousness under the new rule)

Were there major changes?

What were the minor changes?

What happened with interferences and why?

Essentially NO CHANGE in the rule BUT the definition of prior art has changed and we have shifted when prior art becomes of available.

Under the old rule, prior art applied or was available as prior was available before the date of invention

Now, the prior art is available before the filing date.

Under new law, you can’t have interference because it’s based on the filing date as opposed to the date of the invention.

Is double patenting allowed?

How does this relate to the public domain?

Rejections/office actions?

Under the law, there is NO double patenting allowed. There is no double patenting under the law. That means that you can’t patent the exact same thing twice. You can patent a derivation as long as it is novel and non-obvious.

So this means that once something has expired it is free to use and in the public domain.

You will also get a rejection (aka office action) from the patent office if you try to double patent something.

What is the very general time line of obtaining a patent?

I.e. how does it start and how does it (ideally) finish?

What is the time frame for the life of a patent (not a design one)

You file an application, and get a filing date, at some point it should issue; and the expiration date will follow sometime after that.

For utility applications this will be about 20 years.

A publication will generally occur 18 months after it is filed.

Because this takes so long, parties will begin searching before an application is filed in order to determine if there is any prior art that would defeat novelty or non-obviousness issues for the patent

Is patent searching required?

Where are free places you can search?

For searching:

1) It is not required under any circumstances. You can simply prepare and file the application if you want and let the patent office do all the work.

2)  www.uspto.gov (us)

-espace.net (good for international patent applications)

These are free and a place to do a patent search.

After doing a search and deciding to file a patent application, it is not a form you fill out. The thing that is printed as the application is the thing that is printed as the patent. There are a number of parts for the application that you need to have

What are the parts of a  non-provisional patent application?

What happens once you assemble all the parts?

For non-provisional application- you must have these things:

1) Title- tells you what the thing is

2) Background (optional)- tells you in the past we had this need and here’s how we’re fixing the need

3) Summary of the invention- a broad overview (optional)

4) A description of the drawings (optional)- if I’m going to have drawings then I have to have a description of the drawings.

5) Detailed Description of the invention (all of the gory details of how to make and use the invention so that you can actually make and use the invention)

6) Claims- they define the legal scope of the invention that is protected under the law for my patent application.

Once you have all these parts assembled, that’s when you can file the application.

There is a requirement that while the patent application is pending, then you are required to tell anything about anything that makes a difference in evaluating the whether the thing is patentable. You have to tell the patent application about anything that is material to the patentability of my application. Basically you have to provide the government about all prior art that you know about

If you do not satisfy the duty of candor, then you have engaged in fraud and then you have engaged in inequitable conduct and the patent is unenforceable meaning that you can’t sue anyone on infringement

What does it mean if a patent is invalid?

How does this differ from enforceability?

Invalid means that the patent was not novel or non-obvious. So if you withhold info, your patent just becomes unenforceable, it is not necessarily invalid.

Is prosecution a straight forward process?

Can you file multiple applications from an original application?

When we are prosecuting a patent application, it is not necessarily a straight line:

You can file other types of applications from an original application.

Is a non-provisional application formal or informal?

What must it have?

A non-provisional application is examined and is a formal application and must meet all the requirements necessary to file an application 

What is a provisional application?

Is it examined?

Is it formal?

What's its duration?

Why is it so important?

The provisional patent application only last for a year and is informal and does not need to have all the requirements of the non-provisional. It basically just allows you to establish a filing date for the application. Basically if you want to get something filed really quickly, then you can just file something for the application. This allows you to file anything like a drawing on a napkin. And then you get a year to write the formal version with all the bells and whistles of the formal application. And if you file a non-provisional within a year of the provisional’s filing date, it’s like you filed the non-provisional application from the very beginning.

The provisional application is not examined.

This is super important under the new rules because whoever files first is the first person to get the patent whereas under the old rule you could do an interference if necessary

If you get an office action and respond, afterwards, you get a final office action. The final office action limits your ability to respond.

Can you get a second office action from the USPTO?

What is this called?

What can you do in response?

After this you still aren’t done, you can file a continuation, this basically tells the examiner that you want to keep going from where you were before and you basically have to pay a new filing fee.

You can file as many continuations as you want within 20 years of the filing date.

You can also file an RCE (request for continuing examination) that then triggers a new Office Action.

What is a continuation application?

How many can you file?

When can you file it?

You can file as many continuations as you want within 20 years of the filing date.

Continuation is the thing that you filed to keep on going with the patent office.

What is a divisional?

When can you file one?

If your patent application has more than one type of invention in the original application in the application, then the patent application will come back and say pick one and you can file a divisional application directed to the other invention and when you file the divisional application you file a new fee.

This comes up frequently if someone files a device and a method and the patent application will say you should put the method in one and the device in another.

- Continuation in Part- Once an application is filed, you are not allowed to file any new matter at all, but it is possible to add new matter and then you must file a new application and then you file a CIP

Are provisional or non-provisional applications formal or informal?

Which one has continuing applications?

Provisional- informal

non-provisional- formal application

Non-provisional applications get formal applications

What are the three kinds of continuing applications?

Which one has new matter?

How long is the term for continuing applications?

When does this run from? 

Continuing applications share the priority date of the original applications so you only get 20 still from filing date and can never get anything beyond the original filing date.

Do provisional applications affect the 20-year term of the following utility?

What about the filing date under first to file?

When you get your filing date from your provisional application, this does not count against your 20 years, but you treat everything as you filed it. So you never measure the term form the provisional but always from the non-provisional. IT counts towards the filing date

Are there fees you have to pay when filing a patent application?

What about after getting a patent?

During the process of getting a patent there are a number of fees that are due and there are due after obtaining the patent. These fees that are due afterwards are the maintenance fees

What are the main fees that are paid for obtaining a patent?

Your main fees are your filing fee and your issue fee.

($1000 file application)

(500 to issue application

And then 6000 to maintain the application afterwards.

When do you pay maintenance fees?

Abouth how much total are paid in maintenance fees?

What happens if you fail to pay maintenance fees?

You pay maintenance fees at years 3.5, 7.5 and 11.5 (with six month grace period afterwards)

If you don’t pay your maintenance fees, you cannot sue on the patent and the patent becomes unenforceable.