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Tag: patent application

Converting to a Provisional Application

Clients often file a provisional application

Collegiate Mountain Bike Nationals, Purgatory

Collegiate Mountain Bike Nationals, Purgatory

and then file a non-provisional patent application on the same or similar subject matter within a year.  Clients and attorneys sometimes loosely refer to this as converting a provisional application into a non-provisional patent application.  It isn’t really.

What they are really doing is filing a non-provisional patent application and making a domestic benefit claim to the provisional application.  Because the content of the provisional is often so similar to the non-provisional, “converting” is shorthand, but ultimately a misnomer.

Converting to a Non-Provisional Patent Application

There is actually a technical meaning for converting a provisional application into a non-provisional patent application.  It is when you make a specific request to the Patent Office and ask that it take the provisional you filed and treat it as if it were a non-provisional patent application.  If you request this, your provisional better be in good enough shape to actually work as a non-provisional patent application.

Converting in this way doesn’t happens a lot, but it can be a useful loophole in certain circumstances.  For instance, normally, a design patent application cannot claim priority to a provisional application.  This means that often one must file a provisional and a design patent application at the same time, rather than delaying the design patent application.  However, you could potentially file a provisional and then convert it into a non-provisional.  Later, if the drawings in the non-provisional support it, you could file a design application claiming priority to the non-provisional.  This would make it seem like your design application’s priority actually extends back to the provisional’s filing date, which it does, because the provisional became the non-provisional.

Converting to a Provisional Application

This article is actually about the opposite type of request: converting a non-provisional patent application into a provisional application.  This asks the Patent Office to turn a non-provisional into a provisional for any number of reasons (none of which you have to disclose).

I recently had to do this when a client, intending to file a provisional application on its own, navigated the filing system incorrectly and accidentally filed a non-provisional application.  This kind of mistake is surprisingly easy to make in the Patent Office’s new Patent Center / DOCX filing system.

Why Convert?

If the content of the application is limited, as a provisional often is, then filing a provisional application as a non-provisional can be disastrous.  If the mistake is not caught early and the application publishes, it will create a disclosure.  That disclosure will have prior art effects against competitors but also potentially against the patent applicant.  And, if the disclosure is limited, there may not be enough substance to support decent claims.  This can ruin the patentability of the idea and potentially destroy a whole family of patents.

So, if you inadvertently filed a non-provisional application and meant to file a provisional, you can make a special request.

The applicant must make a written request and submit it to the Petitions Office.  The request must clearly identify the patent application and request conversion, preferably by identifying the correct applicable regulation.  Additionally, the applicant must pay fees.  The fees are actually fairly affordable.  In addition to the provisional filing fees (which would have had to have been paid originally anyway), a processing fee ($50 at the small entity rate) and a surcharge ($30 at the small entity rate) are due.  Unfortunately, the Patent Office will not refund the fees associated with filing the non-provisional.

The Petitions Office will consider a request which is proper.  The Petitions Office is quite backed up as of the publish date of this article, and it may take several months for review.  Another petition and filing fee can expedite review of the petition if the applicant wants faster consideration.

Line Differences in Design Patent Applications

Mesquites in Late Spring

The scope of protection of a design patent is defined by the drawings presented therein.  In that way, design patents can often seem like a very simple or straightforward form of protection: show some drawings in an application, file it, get a patent a year later.  Not quite.

The Patent Office manual for examination plainly states:

“The necessity for good drawings in a design patent application cannot be overemphasized.  As the drawing constitutes the whole disclosure of the design, it is of utmost importance that it be so well executed both as to clarity of showing and completeness, that nothing regarding the design sought to be patented is left to conjecture.  An insufficient drawing may be fatal to validity … Moreover, an insufficient drawing may have a negative effect with respect to the effective filing date of a continuing application.” – MPEP 1503.01

The Patent Office quote indicates how important drawing quality is from a validity and examination standpoint, and acknowledges the subtle dangers in haphazard drawing generation.  However, to this should be added that good drawings will also drastically affect the strength of a design patent.

The creation of design patent drawings has to be undertaken very carefully.  The lines illustrating the design are shown in solid lines and broken lines.  Solid lines define the actual protected design, while the broken lines show contextual information.

Broken lines are most commonly used to show environment and to define the boundaries of the claimed design.  Broken lines may show environmental structure or a feature that the design fits onto or is located near, to show the structure in context in its environment.  Broken lines may show portions of a claimed design which are unclaimed.  In some cases, broken lines may illustrate claimed design, such as stitching and fold lines.  However, broken lines are not permitted for the purpose of identifying portions of a claimed design which are immaterial or unimportant.  Broken lines cannot be used to show hidden planes or hidden lines – lines which cannot be seen behind opaque materials.  Broken lines can’t be used in design patent drawings to show alternate positions of a structure, such as a door moving between open and closed positions.

Broken lines may be drawn along a boundary that does not actually exist in reality.  For example, while broken lines are often drawn along real lines, such as the edge or corner of a table, broken lines could be shown extending across the face of the table’s smooth top.  This would show that the top – or a portion of the top – is not claimed.  Creative and flexible use of broken lines can drastically alter the scope of the design patent protection – intentionally or unintentionally.  They also present a powerful to build a packet fence around a design.  Apple granted multiple patents on the iPhone design, each with a different permutation of broken and solid lines:

Broken line permutations in design patent drawings

When broken lines are used, they must be explained.  A statement must be included in the specification explaining the significance of the broken lines.  Sometimes, if the broken lines are used for different reasons, slightly different broken lines are used and each is explained.

There are a lot of ways to prepare a good design patent application, and a lot of ways to mess it up.  When considering design patent protection, I strongly recommend you hire a registered patent attorney to do so, and that ensure that that attorney uses a professional patent draftsman experienced in creating design patent drawings for the United States.  You will rely both on the expertise of the attorney in deciding what views to show, how many views to show, and what material should be claimed and unclaimed, and also on the ability of the draftsman to deliver on instructions from the attorney.

CORONAVIRUS: Patent Office Form For COVID-19 Statement

Getting hotter in Phoenix

As discussed earlier, the Patent and Trademark Office is extending certain deadlines where a delay in filing a paper or paying a fee was due to the COVID-19 outbreak.  Initially, the guidance from the USPTO was to include a specific statement in a filing and make it conspicuous.

The Office has now created a fillable PDF form which contains this statement.  The form can be filled and filed directly to the PTO with its own Doc Code.  Upon filing, it should be easily identified by the Patent Office and processed accordingly.

The form is available here.  Please note: this is a patent form; it looks like the other forms used by the Patent Office.  I’m not aware of any crossover between patent and trademark forms.  It could probably be shoehorned into use as a trademark form, but only with modification, as the fields in the upper half of the form are specific to patent applications and issued patents.  However, you may still be better using the “miscellaneous statement” section of TEAS filings to make your COVID-10 statement in a trademark application or trademark registration.

Public Use of an Invention

The public use of an invention can invalidate patent office 2your ability to obtain a patent in that invention. There are many nuances to the law on public use, and this will explore only one of the nuances. A patent cannot be obtained for an invention if the patent application was filed more than one year after the first date of public use. Thus, whenever a public use has occurred, there is a “critical date” one year later by which a patent application must be filed if patent protection is to be sought.

What is “public use,” though? There is a lot of case law defining this, but unfortunately it is, at the time of this writing, all old case law under the old patent rules.  It is fairly likely, though, that much of the analysis of most aspects of “public use” will be the same under the new patent rules.

The public use bar arises where the invention is in public use before the critical date and is ready for patenting. The test for public use includes consideration of many factors, such as evidence relevant to experimentation, the nature of the activity that occurred in public, whether and to what extent there was public access to the use, the existence of confidentiality obligations with members of the public who witnessed the use, and any commercial exploitation of the invention. Importantly, wide, public knowledge is not necessary for “public use” to have occurred. In some cases, hidden use of a device can be public us; if a new type of suspension is used in a truck that is driven around town for an afternoon, this may be public use even if no one sees the suspension. On the other hand, an inventor’s private use of the invention, for his or her own enjoyment is not a public use.

“Public use” of a claimed invention occurs when the inventor allows another person to use the invention without limitation, restriction or obligation of secrecy to the inventor. The existence of such controls can indicate that a use was not public, but is not necessarily dispositive of the issue.

It is important to understand that the above description is not at all a complete treatment of public use law or patentability requirements.  Every situation is a little bit different, and may be analyzed under these or other areas of patent law.  For that reason, each situation must be addressed on its own facts with the advice of competent counsel.

Patent Office Announces First Bi-Coastal Biotechnology, Chemical and Pharmaceutical Partnership Meeting

Are you excited yet?  The Patent Office announced last week that it will hold its first bi-coastal partnership meeting in the areas of biotech, chemical, and pharma practice.

The official announcement reads:

This inaugural BCBCP expands USPTO’s long-standing partnership in the biotechnology industry sector to customers across the country. The next BCBCP Meeting will be held on September 17th and will be simultaneously available at locations on both the EAST (Alexandria, VA) and West (San Jose, CA) coasts. During the BCBCP, participants will be able to interact with Office personnel in person on both coasts, or alternatively, via webcast. The Biotechnology, and Chemical and Pharmaceutical Customer Partnership was developed to create a collaborative forum for USPTO customers in this industry sector to share ideas, experiences, and insights with USPTO staff. The BCBCP is intended to be informal in nature and will include participants from across the industry. Some of the topics to be discussed by USPTO staff and industry customers will include:

• Markush claim practice

• Patent application filing best practices

• RCE practice

• Overview of patent application initiatives

• Panel discussion on U.S. Supreme Court decisions

(e.g. Alice Corp., v. Cls Bank International. 134 S. Ct. 1537 (Supreme Court March 21, 2014); and Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 186 L.Ed. 2d 124 (2013))

This will be an important meeting because it will be the first since a number of recent Supreme Court cases which have somewhat muddled the water.  Explanation and education from the Patent Office is generally a good thing in working toward clarity and transparency.


Patent Derivation Proceedings FAQ

Derivation proceedings are administrative patent officeproceedings conducted at the Patent Office to determine who should be able to pursue a patent application. The patent reform that was enacted over several years and concluded on March 16, 2013, instituted derivations proceedings, which are most similar – though certainly not identical – to the old inteference proceedings which attempted to ferret which inventor had invented an idea first. Derivation proceedings can be brought by an inventor who believes that an earlier-filed application may have been derived from his own inventive activity. Here are a few basic questions and answers about the proceedings:

Q: What are the requirements for seeking a derivation proceeding?

A: A patent applicant must file a petition to being the proceeding. The petition must establish the basis for finding that an inventor named in an earlier application actually derived the claimed invention from the petitioner. The petition must be made under oath and supported by substantial evidence. The petition must be filed within one year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.

Q: What statutory requirements must a petitioner meet in a petition for a derivation proceeding?

A: In a petition for a derivation proceeding, the petitioner must both: (1) identify which application or patent is disputed; and (2) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.

Q: What is the standard for instituting a derivation proceeding, and who decides whether that standard is met?

A: A derivation may be instituted where the petition sets forth a basis for finding that the inventor named in an earlier application derived the claimed invention and there is substantial evidence to support the allegations raised in the petition. The Patent Trial and Appeal Board decides petitions for derivation and conducts any proceeding arising therefrom.

Q: How will the Board conclude a derivation proceeding?

A: The AIA provides that where a derivation proceeding is instituted and not dismissed, the Board shall issue a written decision that states whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application without authorization.

Q: Are there possibilities for appeal from an unfavorable decision by the Board?

A: Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit.

Q: In lieu of a derivation, can the parties to a derivation proceeding resolve inventorship in any other way?

A: Yes, the parties to a derivation proceeding may resort to binding arbitration to determine inventorship.

Q: What about settlement?

A: Yes, the AIA permits the parties to a derivation proceeding to settle. A settlement in a derivation proceeding will be accepted by the Board unless inconsistent with the evidence of record.

Application Data Sheets in Patent Applications

An Application Data Sheet is a sheet or sheets that may be voluntarily submitted in either a provisional or a nonprovisional application, which contains bibliographic data, arranged in a format specified by the Patent Office. The Patent Office provides a pre-formatted form that can be filled in, and the Office has recently begun allowing applicants to enter bibliographic information electronically and directly on the portal used to upload a patent application.

An application data sheet must be titled “Application Data Sheet” and must contain all required section headings. If an application data sheet is provided, the application data sheet becomes part of the provisional or nonprovisional application for which it has been submitted, and thus part of the file history.

The ADS must include applicant information, correspondent information, application information, representative information. It can include domestic and foreign priority information, as well as assignee information. It can also include a non-publication request. A non-publication is a request to keep an application secret, and it can only be made once, at the time of filing. If it isn’t made at the time of filing, it cannot be made later.

The ADS must be properly signed. The Patent Office will accept a handwritten signature. For electronically produced documents, however, the PTO accepts a very precise type of signature, in the form of “/Name/”. Failure to sign the ADS properly can cause a number of administrative problems. If the ADS isn’t signed properly – and that can include forgetting the leading or trailing “/” – then the requests and information provided in the application data sheet will be largely ignored. The Office will not recognize the inventor and applicants’ addresses, the priority claim, the request for non-publication (if made), an authorization for a foreign patent office to access the application, and a few other things. Fortunately, most of these can be remedied fairly easily by filing a corrected ADS and pointing out what information was previously “missing.” However, the non-publication request cannot be re-made, so the application will be published according to the normal publication schedule at 18 months. The only way to recapture the non-publication request is to expressly abandon the application and file it anew. That should only be done after serious consideration of financial, co-pendency, prior art issues, because those issues may affect the validity of the application or patent issuing from it.

What Can and Cannot be Patented?

Patents can protect inventions, ornamental designs on articles of manufacture, and asexually reproduced plants.  A utility patent is available for a new, nonobvious, and useful invention that falls into one of the following categories:

  • Process
  • Machine
  • Article of manufacture
  • Composition of matter
  • Improvement of any of the above

Congress has decided that some things cannot ever be patented, however, and has written into the laws that the following categories are unavailable for protection:

  • Laws of nature
  • Physical phenomena
  • Abstract ideas
  • Literary, dramatic, musical, and artistic works (these can be protected with copyright, however)
  • Inventions which are either not useful / impossible (such as perpetual motion machines) or inventions which are offensive to public morality

There are a number of requirements for patentability.  An invention must fall into one of the above categories, but must also be:

  • Novel
  • Nonobvious
  • Adequately described or enabled (for one of ordinary skill in the art to make and use the invention)
  • Claimed by the inventor in clear and definite terms

These four requirements above are often the most difficult hurdles for most applicants and inventors to overcome, especially if the applicant attempts to draft a patent application on its own.  The application submitted to the Patent Office must be written so that the invention is presented as a novel and nonobvious one, or it must be proven in argument later on.  Additionally, the application must describe and claim the invention fully and clearly, which, in some ways, means that the application should adhere to terminology generally used in patents and must always adhere to the many, many rules regarding formatting and diction.

What is a Continuation Patent Application?

A continuation patent applicationpatent and trademark office is a type of continuing application. Yes, “continuation” does have a separate meaning from “continuing,” and each are proper terms in patent-ese. A few weeks ago I wrote about divisional applications, which are another type of continuing application.

A continuation application is an application that continues prosecution of the original subject matter of a previous patent application in a different way. Continuation applications are based on the same disclosure of the previous application, and do not add any new subject matter. Because they rely only on subject matter that was disclosed in the earlier application, continuation applications are entitled to the same priority date – often times – the filing date – of the earlier application. This means that even though a continuation application is filed after an earlier application, it adopts the priority date of the earlier application. Because the Patent Office limits the prior art that can be used against a patent application to art which preceded the priority date of an application, a continuation application which claims benefit to an earlier filing date can be helpful in jumping over, or antedating, prior art.

Continuation applications are often used in a few situations. An examiner will sometimes reject some claims of an application but allow others. If the inventor wants to have a patent issue immediately, the rejected claims can be canceled from the application and then re-filed in a continuation application. A continuation may also be appropriate if the inventor feels that there was subject matter disclosed in the earlier application but not claimed, and that protection for that subject matter should now be sought. Lastly, and similarly to the above point, a continuation is often filed if an earlier application claimed a product or device, but there was a method of using the device that remained unclaimed. Or vice versa. The continuation can claim the method if only the product was claimed earlier, or it can claim the product if only the method was claimed earlier.

Evolution of the Micro Entity

Today, as the last bit of the America Invents Act goes into effect, the Patent Office introduces a new fee structure.  Some fees are going up, some fees are going down (Patently-O has a nice article comparing new fees to old).  The micro entity status is now introduced and effective, and promises to save some inventors a little bit of money and create a huge logistical hassle.

Previously, two types of entities existed: large and small.  Small entities paid half the fee that large entities did.  By law, small entities are individuals and independent inventors who have not assigned or licensed their patent to a large entity.  Small businesses are defined under the SBA, and are typically considered as companies with less than 500 employees.  Nonprofit organizations, such as universities and nonprofit scientific or educational organizations, were also considered small entities, provided they have not assigned or licensed the patent rights to a large entity.

The AIA has created a third entity: the micro-entity.  Micro-entities get to pay 75% of the large entity fees – 50% of the small entity fees – but the restrictions placed on the definition of “micro-entity” are daunting.  A micro-entity must meet four requirements:

  • it first qualifies as a small entity;
  • it has not been named as an inventor in more than 4 previously-filed patent applications;
  • it has not, in the last calendar year preceding the year in which the fee is paid, had a gross income (as defined in Section 61(a) of the Internal Revenue Code of 1986) which is greater than 3 times the median household income for that preceding year, as most recently reported by the Census Bureau; and
  • it has not assigned, granted, or conveyed any ownership interest in the application to an entity that made more than 3 times the median household income.

Got that?  The first requirement is fairly easy to knock out.  We do it all the time.  The second requirement can be more tricky.  Some inventors forget they have been named in patent applications, particularly if their role was relatively minor (they may have contributed only a small bit of material claimed in an application).  So the attorney is probably going to look up each inventor before quoting the government fee.  If an application names several inventors, this grows a bit burdensome.

The last two requirements are really the stumbling blocks, for a few reasons.  First, attorneys generally don’t want to know – or don’t want to ask, at least – how much money their clients made.  It is a subject most consider rude, and it is especially awkward to ask a client how much he or she made before quoting them a fee.  Clients may be suspicious that the fee they are given has been adjusted after answering an income question.  Second, even if the client does tell the attorney how much he or she makes, now the attorney has to check that against the median household income.  This would seem to require a little research into the depths of the Internal Revenue Code and the Census Bureau both.  However, digging into the finalized rules on the AIA micro-entity status, the rules state that the Patent Office will provide this information on its (most difficult to read) website.  Well, I couldn’t find it.  But, the Patent Office does have a form for asserting micro-entity status, and a link on that form shows that the three times the median household income is $150,162.00 a year.  Houston, we have a number.

Unfortunately, the story doesn’t stop there.  Micro-entity status must be checked each time a fee is paid.  This can be quite frequently, depending on the examination of the application.  If a client’s income changes from year to year, the number will have to be checked each year.  So each time a fee is paid, the attorney will have to go through the rigamarole of asking a client how much he or she made last year, whether he or she has filed other patent applications, and then comparing his or her income to the rest of the US.  I predict that we won’t see many filings made under the micro-entity status because of the administrative burden on the attorney.