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   Utility to design as fall-back position...
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   Author  Topic: Utility to design as fall-back position...  (Read 899 times)
warrendekker
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Utility to design as fall-back position...
« on: Dec 12th, 2007, 4:00pm »
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A hypothetical situation.
 
A man comes up with a new design for a ukulele neck.  Strong, light, and comfortable in the hand, he is sure that a utility patent can be obtained, and files a utility patent application.  The USPTO examiner is not impressed.  The examiner steadfastly maintains that the new design for the ukulele neck was fully anticipated by a patent for a banjo neck, which expired 10 years ago.  The inventor responds to the First Office Action, redrafting and narrowing the claims, doing his best to make sure the revised claims make a clear difference between his ukulele neck, and the expired patent on the banjo neck.  The examiner is not convinced, and in the second Office Action, refuses to budge in his determination that the concept behind the new ukulele neck was fully anticipated by the expired patent on the banjo neck.  The inventor's dream of a utility patent seems to be going down in flames.  He knows deep down that a request for further examination, or a continuation that would only try to reformulate the same set of facts, will not be successful.
 
The inventor's ukulele neck does have a unique shape, and is quite possibly patentable for its ornamental design, even if a utility patent is not obtainable.  The inventor wants to obtain some protection, if possible.  Immediately after receiving the second Office Action (shooting down the utility patent), should the inventor:  a. file a new design patent application separate from the utility patent application, or b. file a design patent application as a continuation of the utility patent application (is that even possible)?  The inventor has only recently begun playing his new ukulele at the local grass shack and pub, and is well within the year's grace period for filing in the USA.
 
Thanks to all who would care to respond.
 
 
 
 
« Last Edit: Dec 12th, 2007, 4:04pm by warrendekker » IP Logged
asdf
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Re: Utility to design as fall-back position...
« Reply #1 on: Dec 18th, 2007, 7:00pm »
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Why wouldn't the ukelele inventor be able to claim the neck on a ukelele body?  The ukelele body is radically different from a banjo's (a box with a hole in it vice a holeless drumhead -- bear with me, I play keyboard, not strings).  Even with the new post-KSR obviousness nonstandard, the different instrumentation should be nonobvious and patentably distinct.
 
Was the utility patent application filed/published long enough ago that its drawings could be used as prior art against the inventor even in a design application?
 
Maybe it's time to appeal to BPAI?
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warrendekker
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Re: Utility to design as fall-back position...
« Reply #2 on: Dec 26th, 2007, 8:55pm »
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Well, let me narrow the question considerably.
 
The examiner probably won't budge that the concept behind the ukulele neck was anticipated by the older patent on a banjo neck, and that chances of obtaining a utility patent are nil.
 
The inventor of the ukulele neck decides to try to obtain a design patent, as he feels that its shape is unique.  
 
Does he file the design patent:  as a continuation of the original utility application, as a continuation-in-part of the original utility patent, or just file a design patent application with no reference to his utility patent application?  The inventor has 3 months to reply to the second/final office action, and his invention has been made public for far less than 1 year.
 
Just trying to learn about the process.  Thanks to all who would respond.
 
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