ContactMeans Plus Function Claims
Posted Saturday, April 17, 2010 by Jim Ruttler.
Applicants should be careful when using means plus function language to claim computer systems and software. The Federal Circuit has recent held that means plus function claims will be invalidated if they are not supported by specific hardware components in the specification. It is not enough to merely describe a general purpose computer in the specification. Rather than claiming using means plus function language, applicants should consider claiming the method steps and tie the method steps to a physical structure such as computer readable storage media.
Patent Reform Action 2010
Posted Wednesday, March 10, 2010 by Jim Ruttler.
The Senate has introduced a bill entitled Patent Reform Act of 2010. This bill includes a provision for a switch to a first inventor to file system, which would be a departure from the current first to invent system. This would mean that a patent would be awarded to the first inventor to file a patent application regardless of which of those inventors was the first to think of the idea. The bill would also establish a new system for post-grant review of issued patents that would be handled by the patent appeals board and would allow third parties to submit prior art directly to the examiner for consideration. Both of these provisions would theoretically help protect against the existence of frivolous patents. With regards to fees, this bill would allow the Patent Office to have more control over setting its fees and would create a new micro-entity for those with five or fewer applications. These micro entities would be entitled to a further reduction in fees. More details on this bill can be found at: http://judiciary.senate.gov/legislation/upload/PatentReformAmendment.pdf.
New USPTO Newsletter for Independent Inventors
Posted Tuesday, March 09, 2010 by Jim Ruttler.
The USPTO has launched a newsletter targeted towards independent inventors. The first issue covers topics such as patent reform, avoiding scams, advice on getting patents, meeting other inventors, and joining organizations. The newsletter may be accessed from http://www.uspto.gov/inventorseye/.
Responding to Restriction Requirements
Posted Monday, February 15, 2010 by Jim Ruttler.
Restriction requirements by examiners are common. Typically, examiners require election of a group of claims along with a separate requirement to elect species claims within that group. The easiest way to deal with restriction requirements is to comply with the examiner’s request and elect a group and species. However, this can result in having to pursue unelected claims in a separate divisional application as well as eliminating claims that may be important to define over art cited later during examination. Accordingly, one strategy may be to traverse the restriction requirement focusing on the fact that the examiner has not demonstrated why the additional search burden would be unreasonable. Because examiners often just state that there would be a burden without providing specific reasons to support such a statement, it is often possible to reverse the examiner’s position by pointing this out.
Compact Examination
Posted Monday, February 08, 2010 by Jim Ruttler.
Patent examiners have been initiating contact over the phone to suggest amendments or provide prior art in order to expedite examination. Traditionally, this has been very rare and examiners have relied solely on written rejections. The benefit of the phone calls is that it helps applicant’s understand right away where the issues are and allows for quick amendments to address the examiner’s concerns. Ultimately, this leads to more compact examination and faster allowance. Indeed, the Director of the Patne Office has recently confirmed my experiences in the following blog posting.
http://www.uspto.gov/blog/director/entry/thanks_patents_team_compact_prosecution
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