ContactSupreme Court to Consider Business Method Patents
Posted Saturday, June 06, 2009 by Jim Ruttler.
The U.S. Supreme Court has agreed to take up Bilski on appeal. The lower appellate court has already ruled that Bilski’s claims towards a business method are not patentable subject matter. The rule set forth by the appellate court is that patentable subject matter must be tied to a particular machine or result in a physical transformation, thereby eliminating patent protection for most business methods. This ruling has considerable impact on the scope of patent protection and inventors and patent professionals are eager to hear whether the Supreme Court will reverse the lower court’s decision and allow protection for new business methods.
Examiner Incentives
Posted Sunday, May 31, 2009 by Jim Ruttler.
Examiners at the USPTO receive compensation based upon a credit system. The more credits they earn, the higher their compensation. Credits are most commonly earned by picking up a new case for examination, causing a request for continued examination (RCE) to be filed, or disposing of the case either through issuance or abandonment. Although, examiner behavior is constrained by internal quality review as well as the appeal process, it is not uncommon for examiners to issue a few rejections before allowing cases as this increases earned credits through the filing of RCEs. In order to minimize the delay and expense that follows from this practice, it is important to draft high quality claims, strong and concise arguments for allowance, and supplement responses to office actions with follow up calls to the examiner. Additionally, one should not dismiss the potential for filing an appeal in the event an examiner persists with an unreasonable position.
Improvements to Prior Filed Application
Posted Sunday, May 31, 2009 by Jim Ruttler.
When an inventor has already filed a patent application and develops new improvements to the subject matter contained within the prior filed application, it is necessary to file a new patent application directed towards the new improvements. However, there is a risk that the prior filed patent application or any public disclosure or commercialization of the prior subject matter will be cited against the follow up application during examination. This would occur when the prior filed patent application has been published for more than a year or when the subject matter contained within that prior filed patent application has been publicly disclosed or commercialized for more than one year. If this occurs, the prior filed application or subject matter can be cited against the follow up application and the follow up application would have to be independently novel in order to gain allowance. However, this is not an issue so long as the prior filed patent application has not been published for more than a year and the subject matter contained therein has not been publicly disclosed or commercialized for more than one year.
Trademark Monitoring
Posted Tuesday, April 28, 2009 by Jim Ruttler.
The existence of other similar registered and unregistered trademarks can significantly erode the strength of a mark. Accordingly, it is important to inform others of your trademark rights and prevent confusingly similar uses of a mark. Additionally, it is important to ensure that confusingly similar trademarks are not registered with the U.S. Trademark Office by filing letters of protest or oppositions during the formal publication period for incoming applications. One way to ensure that you are notified of the presence of similar marks is to enlist the services of a watching company, such as CTCorsearch. Watch companies can monitor unregistered and registered activities relating to a specified mark for a relatively modest fee, thereby permitting one to take early decisive action whenever appropriate.
Prior Art Submission
Posted Wednesday, April 08, 2009 by Jim Ruttler.
While an applicant is not required to conduct any prior art research prior to filing a patent application or even during examination, the applicant is required to submit any known prior art to the patent office. The timing for doing so is anytime before the first office action is issued in the application or within three months of discovery of the prior art. When these windows of opportunity are missed it results in the examiner having to review the newly submitted references after already having issued rejections or even allowance of the patent application. Thus, it is necessary to file a special petition to have the prior art considered along with payment of a fee. Alternatively, it is possible to include the prior art along with a request for continued examination after a final office action.
Failure to provide known prior art can be gounds for invalidation of the patent during an infringement suit. Accordingly, it is a good idea to error on the side of caution and provide any known prior art to the patent office as soon as it is discovered.
Keep in mind that prior art includes any patents, patent applications, foreign patents, foreign patent applications, non-patent publications, and even prior art and rejections issued by an examiner in a related patent application.
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