Category: Patents

In this blog post I will say a few words about what not to do when drafting claims.  First a metaphor.  Suppose the invention is the one in Harry Nilsson’s song “Coconut“.  The first draft of the proposed patent claim, prepared by your new associate, is:

1.  A method for treating a bellyache, the method carried out with respect to a lime and a coconut, the method comprising the steps of:

• putting the lime in the coconut, and
• drinking it all up.

Continue reading “What not to do when drafting claims (lime and coconut)”

Last year the Intellectual Property Law Section of the State Bar of Michigan invited me to speak at their Spring Seminar 2014 in East Lansing, Michigan.  It was a delightful event, well organized and well attended.  From the point of view of a speaker, what’s nice is when an audience has lots of good questions.  This was such an audience.  I am delighted that they have invited me back to speak at this year’s Spring Seminar 2015.

You can see the program and brochure.  It will be Monday, March 16, again in East Lansing.  Fellow intellectual property bloggers Martin Schwimmer (The Trademark Blog) and Eugene Quinn (IPWatchdog) will also be presenting, each of them in a plenary session.

Continue reading “CLE opportunity in Michigan on March 16”

If you have not already seen it, you might want to look at the video documentary “Inventing to Nowhere”.  It talks about the importance of the patent system.  It is quite well done.

We are all accustomed by now to the very important trick of “aging the preliminary amendment”.  When we file a transition application (an application filed on or after March 16, 2013 which is tied to some application filed before that date) the usual mistake is to file the preliminary amendment on filing day.  The reason it is usually a mistake is that years later in litigation, the infringer will howl that the preliminary amendment added new matter, and that that new matter had been claimed, and that the “new” law of patentability should have been applied to the case rather than the “old” law of patentability that was actually applied to the case (because you refrained from “checking the box” in the ADS).

So the malpractice-avoiding strategy for many fact patterns is the by now very familiar practice of “aging the preliminary amendment”.  We file the transition case, and then wait for midnight to pass in Virginia.  Only then do we file the PA.  Later the Examiner will determine whether or not the PA contains new matter.  If the Examiner enters the amendment, this counts as an express determination by the Examiner that the PA must not have contained new matter.  This denies the infringer, in litigation, any opportunity to howl about the case having supposedly been examined using the “wrong” law of patentability.

Which gets us to the latest trap for the unwary.

Continue reading “Yet another AIA trap for the unwary”

There are lots of situations where USPTO will refuse to do what you want if USPTO thinks that you are not the “attorney of record”.  Filing any of a variety of EFS-Web auto-granted actions such as a Terminal Disclaimer.  When you try to do any of these things in an application file, the EFS-Web system asks you to type in your registration number and will look up that number in the Palm database for the application file.  If EFS-Web thinks you aren’t the attorney of record, it will halt and refuse to let you move forward.

As another example it is impossible to get the auto-granted petition to withdraw as attorney, unless the Palm system thinks you are the attorney.

You never know when one of these situations might come up without warning, and you would need to get such a filing done.  Which means that as a general rule you should be filing a Power of Attorney in each case.  And as a general rule you should docket carefully to check to make sure the USPTO actually recognizes the Power of Attorney.  Then when a crunch time comes, such as the need to urgently file a Terminal Disclaimer, or get yourself withdrawn as attorney, you will actually be able to get the task done.

And as it turns out, at least two of USPTO’s ways for you to supposedly learn whether or not the USPTO recognizes the Power of Attorney are flawed and can’t be trusted.

Continue reading “How to know whether USPTO has recognized your patent Power of Attorney?”

(Followup posting here.)

USPTO’s internal standard for attending to PPH petitions is two months. Well over four months have passed since the last time we saw the USPTO decide a PPH petition.  Our oldest PPH that stands unattended-to by the USPTO was filed August 26, 2014, a full four months ago now.

Continue reading “PPH petition backlog — four months and counting”