The Life of a Patent App (post filing)

So after you submit you patent application the following happens:

• If you filed via mail, you'll receive a receipt postcard. If you filed electronically, you'll receive a filing acknowledgement. It'll contain your date of receipt, your serial number or application number, and also your confirmation number. You should keep both your serial number and filing date confidential.

•  About one to three months later you will receive an official filing receipt by mail. This would include: the name of the inventors, the title of the patent application, the examining group of your application, the filing date, serial, and confirmation number, the number of claims, the filing fee paid, your name and address. You should make sure all the above information is correct as printed. 

•  Patent Pending States starts when your regular patent application or PPA is filed and lasts until the patent is actually issued

•  After receiving your official filing receipt you should send in your Information Disclosure Statement. The PTO wants the IDS to be filed within three months of your filing date.

•  Finally, about six months to three years after the filing date you'll receive a "first Office Action" (OA) that consists of forms and a letter from the examiner. The OA will: reject claims, list defects in drawings or specs, cite prior art that may show your invention as not novel or obvious.

More information about the IDS: The IDS is essentially a disclosure to the USPTO of all prior art and any other information such as relevant litigation of which the inventor is aware of that might influence the patent examiner in deciding on the patent application itself.

Like usual, the reference used was this book.

Going Abroad

So why file your patent application in other countries? Because the US patent will give you a monopoly in only the US and not anywhere. So in order to get protection for your invention you must file in each country where you plan to launch the product. But this process can be very complicated, expensive, and time consuming.

The most important thing to note about foreign filing is the International Convention for the Protection of Industrial Property. Or people in the patent industry just call it "Paris Convention". This treaty was initially started in 1883 and has been augmented and revised countless times since then. What this convention means for inventors is basically the following: If you file a patent application (PPA or normal) in any of the countries that signed the treaty then you can file a corresponding application in any other country on that list  within one year of your earliest filing date. Your application in the new countries will show the original date of filing for your very first application filed. This especially helps in situations of prior art. Once you miss the one year deadline, any foreign apps filed won't be entitled to the original application date.

The European Patent Office (EPO) is another important entity to know. It grew out of the European Union and services those same countries. Members of the EU are also covered under the European Patent Convention (EPC). Under this agreement, one patent filing with the EPO will be covered in every country you select within the EU when first filing for the patent.

Lastly (for purposes of this blog), there is the Patent Cooperation Treaty (PCT). Under this treaty which was entered into in 1978, US residents can file a patent with the USPTO and make a single international filing with the USPTO within a year of the original filing date. This will cover all of the PCT jurisdictions including the EPC.

However, there are always Non-Convention Countries that aren't party to any treaties. But filing patents in these countries are similar to any patent application. This time however, you won't have the benefit of entitling your application to your first application date to establish prior art. In addition, each country will of course need to be filed for separately. Extremely time consuming work!

Resource was this book. Chp 12

What does "Obvious" Mean?

Keeping with the subject of obviousness this past week, I wanted to expand on what obvious means. According to the NOLO 'Patent it Yourself' book, and the discussions in class; it is clear that most patent attrneys, patent examiners, and judges can't agree on the meaning of the term. What makes this situation even more complicated is the fact that courts have used different definitions of the term over the year. One used is that unobviousness equates to a "flash of genius". Another phrase used to define it was "a synergistic effect (the whole is greater than the sum of its parts). Foreign courts usually require an "inventive step." The problem or confusion is only extrapolated by the fact that these definitions are just as difficult to fully understand as the term obviousness itself.

As we learned in class, in 1966 with the court ruling on Graham v. John Deere; the Supreme Court set these guidelines for classifying an invention as obvious or unobvious. These were the following steps:

1. Determine the scope and content of the prior art
2. Determine the novelty of the invention
3. Determine the level of skill of artisans in the pertinent art.
4. Against this background, determine the obviousness or unobviousness of the inventive subject matter
5. Also consider secondary and objective factors such as commercial success, long-felt but unsolved need, and failure of others.

But let's examine these steps for just a second. When detailing the way to spot obviousness vs. unobviousness, the court uses the words  obviousness and unobviousness. Which makes little sense to me. That's like saying a circuit board, is a board that has circuits on it. But what is it really?

In my opinion, the first thing you should do to determine if your invention is patentable is to follow the John Deere case and see if achieves new and unexpected results. But even the courts deem that it doesn't, remember there are ways around these technicalities. One of which being is that if your product enjoyed commercial success it may be considered unobvious.

Like always, article was referenced from the following:
Pressman, David. Patent It Yourself: Your Step-by-step Guide to Filing at the U.S. Patent Office. Berkeley, CA: Nolo, 2012.

Arguments against Obviousness

If let's say the USPTO deems an invention as obvious, there are steps around it. Below are 15 general arguments against obvioussness with brief descriptions.

1. Unexpected results- The result achieved by the invention were unexpected, critical, or unusual
2. Assumed unworkability- Those skilled in the art thought the techniques were unworkable until this point in time
3. Commercial Success- The invention has attained commercial success
4. Purchase Offers- Others (especially accused infringers) have tried to purchase or license the product
5. New Principles of Operation- The invention uses a new principle of operation.
6. Inability of Competitors- Competitors could not copy the product until the method of reverse engineering was employed or by using details of a publication
7. Professional Recognition- The invention has been given an award or recognized in a professional publication.
8. Copying by Others- others have chosen to copy or implement the invention
9. Misunderstood Reference- "the reference does not teach what the exminer relies upon it as supposedly teaching"
10. Inoperative References- Prior-art references that were relied on are inoperative
11. Poor References- the prior-art references are vague, conflicting, or old and should be construed narrowly. 
12. Solution of Long-felt and Unsolved Need- The invention solves a long-felt, long-existing, but unsolved need
13. Crowded Art- The invention is classified in a crowded art, so small steps could mean big innovation and edge over competitors.
14. No Convincing Reasoning- The examiner did not present sufficient or convincing enough evidence as to why the invention is obvious
15. Solution of Long-Felt and Unsolved Needs- the invention solves a long-felt, long-existing, but unmet need

The list goes on, but this should give the general idea that there are plenty of arguments for when the court declares your invention as obvious. So don't give up! Unless your invention really is that obvious, in which case: don't waste your time!

Post can be referenced below:
Pressman, David. Patent It Yourself: Your Step-by-step Guide to Filing at the U.S. Patent Office. Berkeley, CA: Nolo, 2012.