ContactIssued Patent in 76 Days
Posted Sunday, March 01, 2009 by Jim Ruttler.
The quickest patent issued in 2008 was in 76 days (U.S. Patent No. 7,408,364). Patent applications typically take at least a couple of years before examination even begins, so less than three months from filing to allowance is truly remarkable. Such an astonishingly quick turnaround time was achieved using the accelerated examination process, which was newly introduced in the past couple of years. This accelerated examination process requires the normal patent application plus a complete documented prior art search and detailed analysis showing how the claims of the patent application are new over the prior art. The general attitude among patent attorneys has been that the quick turnaround time is not worth the risks of having to make admissions regarding the elements of the invention that are not new and of having to warrant that a full and complete search was conducted. I’ve also experienced difficulty with the patent office rejecting searches as not sufficiently exhaustive and have not personally considered the accelerated application process as a viable alternative to regular examination. Clearly, however, with such a short time frame from filing to allowance, with some inventions these risks may be worth the opportunity to have an enforceable patent before most applicants receive a notice to file missing parts.
Material Trademark Alterations
Posted Saturday, February 21, 2009 by Jim Ruttler.
When a federal trademark application is filed, it is necessary to provide a drawing of the mark and a specimen. The drawing is the mark for which registration is requested while the specimen is evidence that the mark is actually being used. For example, the drawing of the mark may be the text FREIGHT TRAIN and the specimen could be a photograph of the products, such as jeans, bearing the FREIGHT TRAIN label. It is of critical importance that the mark as depicted in the drawing exactly match up with the mark embodied in the specimen to avoid a rejection and the risk of having to refile with a completely new priority date. While this rule appears simple enough, in practice there is often some uncertainty involved given the tendency for marks to evolve over time. For example, would specimens bearing FREIGHT TRAIN JEANS or FREIGHT JEANS or WWW.FREIGHTTRAIN.COM be materially different from FREIGHT TRAIN as depicted in the drawings? It is almost impossible to tell in many cases without getting the opinion of the examining attorney and there is the risk of having to refile a new trademark application. Accordingly, it is important when filing a trademark application to ensure that the mark as depicted is actually the precise mark that is or will be embodied on the product.
Options After Final Rejection
Posted Friday, February 20, 2009 by Jim Ruttler.
After a final rejection is received in a patent application and assuming no agreement has been reached regarding allowance, it is still possible to continue examination. One option is to file a request for continued examination, otherwise known as an RCE, and respond the the final rejection. Filing an RCE essentially restarts the patent examination process and the examiner will then consider the arguments and amendments, conduct additional searching, and determine whether to issue a non-final rejection or allow the claims. Another option is to file a continuation application. A continuation application is a brand new application containing the same contents that relates back to the priority date of the parent application currently being examined. Once filed, the continuation application is docketed for examination and will be examined many months, if not years, later. A third option is to file a notice of appeal to the Board of Patent Appeals for consideration of the examiner’s rejections. The appeal process is time consuming, can be costly, and can involve significant delays, but can result in a reversal of the Examiner’s rejections and allowance.
Deferred Examination
Posted Sunday, February 15, 2009 by Jim Ruttler.
The Patent Office is presently holding roundtable discussions on the possibility of adopting deferred examination to reduce the burdens on examination. Currently, once a non-provisional application is filed it is docketed for examination and reviewed by an examiner without further request. This can be a waste of resources because on some occassions the applicant has lost interest in the invention by the time examination begins. Under a deferred examination system, an applicant would need to request that examination begin after the application is filed thereby making the default non-examination rather than examination. Presumably, this would permit examiners to focus their efforts on examining only those inventions that continue to be important to applicants.
New Limitations on Business Method Patents
Posted Wednesday, February 11, 2009 by Jim Ruttler.
The Federal Circuit recently limited patent eligible subject matter to that which satisfies the machine or transformation test. This test allows only inventions that are tied to a particular machine or article or that result in a physical transformation to be patented. Practically speaking, this means that not all business methods and software processes are patentable anymore unless they are tied to something physical or result in a physical transformation. This decision is currently being appealed to the U.S. Supreme Court, so more guidance may come.
‹‹ Newer Entries | 1 | 2 | 3 | 4 | 5 | 6 | 7 | 8 | 9 | 10 | 11 | 12 | 13 | 14 | 15 | 16 | 17 | 18 | 19 | 20 | 21 | Older Entries ››