Utility and Design Applications May Be Continuations of Each Other

12/29/2008 By Leave a Comment

A utility application can claim the benefit of a design application, and a design application can claim the benefit of a utility application:

Where the conditions of 35 U.S.C. 120 are met, a design application may be considered a continuing application of an earlier utility application. Conversely, this also applies to a utility application relying on the benefit of the filing date of an earlier filed design application. See In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application.

via MPEP 1504.20 Benefit Under – 1500 Design Patents.

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Filed Under: Inventions, Laws and Rules, MPEP, Patents

Continuations

01/16/2008 By Leave a Comment

37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure: MPEP 201.06(c)
Claiming the Benefit of an Earlier Filing Date: MPEP 201.11
Oath or declaration: MPEP 602.05(a), 37 CFR 1.63, MPEP 201.06(c)(II)
Information Disclosure Statements: MPEP 609.02

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Filed Under: General, MPEP, Patents

New Claims and Continuation Rules

08/23/2007 By Leave a Comment

Effective November 1, 2007, and applicable to pending applications in various ways, there are some major changes in the number of claims permitted in an application, and in the number of continuations permitted. A few highlights (with many details left out):

* No more than 5 independent and 25 total claims per application (5/25 rule). For applications exceeding the 5/25 rule, an examination support document (ESD) must be filed before the first office action, or the application must be amended to comply with the 5/25 rule.

[Read more...]

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Filed Under: General, Laws and Rules, MPEP, Notices, Patents

Patent Cooperation Treaty Links

07/03/2007 By Leave a Comment

The Patent Cooperation Treaty (PCT) is an international agreement for filing patent applications having effect in many countries around the world. Although the PCT system does not provide for the grant of “an international patent”, the system simplifies the process of filing patent applications, delays the expenses associated with applying for patent protection in foreign countries, and allows the inventor more time to assess the commercial viability of his/her invention. Under the PCT, an inventor can file a single international patent application in one language with one patent office in order to simultaneously seek protection for an invention in the PCT member countries (source: USPTO Inventor Resources).

PCT Links:
WIPO PCT Resources
About the PCT
PCT Articles (html, pdf)
PCT Rules (html, pdf)
PCT Treaty, Regulations, and Administrative Instructions
General FAQs on Patents from WIPO
PCT Applicant’s Guide
Types of Protection Available via the PCT in PCT Contracting States
WIPO Standard Two Letter Country Codes
Time Limits for Entering National/Regional Phase under PCT Chapters I and II
Effects of modification of PCT Article 22(1) time limit
PCT Contracting States for which a Regional Patent can be Obtained via the PCT
PCT Fee Tables by Countries/Offices
PCT Fees in US Dollars
Official Notices (PCT Gazette) Collection
PCT Newsletter
PCT Time Limit Calculator
USPTO PCT Office including Forms, Fees, and Information
European Patent Office (EPO)
Filing an application in the EPO
MPEP Chapter 1800 Patent Cooperation Treaty (html, pdf)

Searching:
PatentScope Search – International Patent Applications Search
esp@cenet – EP and WIPO Patent Search

Phone Numbers:
The USPTO PCT Help Desk, which provides information and assistance on the PCT process, may be reached by telephone at (571) 272-4300 between the hours of 9:00 am and 4:30 pm (EST/EDT), Monday through Friday or by facsimile (FAX) at (571) 273-0419 twenty-four hours a day.

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Filed Under: EPO, Europe, General, International, MPEP, Patents, PCT, Resources, WIPO

Means+Function Claim Must Have Corresponding Structure

06/19/2007 By Leave a Comment

Biomedino v. Waters Technology (Fed. Cir. 2007)

(via Patently-O)

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Filed Under: General, Laws and Rules, MPEP, Patents

Supreme Court Decision: KSR v. Teleflex

05/02/2007 By Leave a Comment

If you haven’t heard already, the Supreme Court’s recent decision makes it easier to invalidate already issued patents, and will likely make it more difficult to obtain patents. More to come later.

Links: KSR v. Teleflex decision, Transcript of oral arguments.

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Filed Under: General, Laws and Rules, Lawsuits, MPEP, Patents

How does FDA approval affect a patent’s term?

10/24/2006 By Leave a Comment

Q: Does FDA approval of a drug for a new use forestall the expiration of the drug’s patent for an old use? Wellbutrin XL has been approved for major depression for a while. Its patent is up some time this year. It has recently been approved so that it can be marketed for seasonal affective disorder (SAD). Does that mean that a new patent is issued?

A: New patents are not automatically issued. In order to receive a patent you must file a patent application. A patent is only issued after a lengthy and in-depth examination, during which time you have the opportunity to respond to rejections from the patent office.

A patent’s term is unaffected by FDA approval allowing an already existing drug to be marketed for a different illness. The patent term for a drug is 20 years from filing or 17 years from grant, depending on when it was filed (with few exceptions, see 21 CFR 60, 35 USC 156).

[Read more...]

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Filed Under: General, Laws and Rules, MPEP, Patents, Q & A

New Manual of Patent Examining Procedure (MPEP)

12/27/2005 By Leave a Comment

The Manual of Patent Examining Procedure (MPEP) Eighth Edition, Revision 4 has been released. The Manual is published to provide U.S. Patent and Trademark Office (USPTO) patent examiners, applicants, attorneys, agents, and representatives of applicants with a reference work on the practices and procedures relative to the prosecution of patent applications before the USPTO.

This revision incorporates the changes necessitated by the final rule “Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004,” which became effective on September 14, 2005. Chapter 2300 has been rewritten to incorporate the new Board of Patent Appeals and Interferences rules that became effective on September 13, 2004. The rules directed to interferences are in Part 41, Subparts D and E of title 37, Code of Federal Regulations.

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Filed Under: General, Laws and Rules, MPEP, Patents, Resources

Idea exchanges, collaborative inventing, and prior art

11/03/2005 By 2 Comments

Websites such as shouldexist.org enable users to publish their inventive ideas and collaborate with others to refine and develop their inventions. Users may donate their time and money to the website and to specific projects. Of particular interest is that all discussions and projects are documented, dated, published on-line, and publicly available; this, and any other on-line publication, is considered prior art (MPEP 901.06, 2128 ). While it is unlikely that any patent office, patent attorney, or professional prior art searcher is currently searching this and similar websites, such sites should be searched prior to and during the drafting of any patent application. The public disclosures on sites such as shouldexist.org may also prove valuable in questioning the validity of patents during reexaminations and patent infringement proceedings.

Links: shouldexist.org, halfbakery.com, idea-a-day.com, brightidea.com, creativitypool.com, Idea Banks on dmoz.org, thinkcycle.org, globalideasbank.org.

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Filed Under: General, Lawsuits, MPEP, Open Source, Patents, Resources

Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility

10/31/2005 By Leave a Comment

The USPTO has released interim guidelines for determining the eligibility of subject matter for patent applications. The guidelines were published after a recent appeal (Ex parte Lundgren, Appeal No. 2003-2088 (BPAI 2005)) in which the Board of Patent Appeals and Interferences issued a precedential opinion stating that “… there is currently no judicially recognized separate “technological arts” test to determine patent eligible subject matter under § 101.” This decision may have the effect of eliminating the requirement that business method inventions be tied to a computer or some other electronic device.

Links: Association of Patent Law Firms.

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Filed Under: General, Laws and Rules, MPEP, Patents
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