The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Dec 5th, 2019, 7:27pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Obviousness
(Moderators: Forum Admin, JimIvey, JSonnabend)
   In re Chu
« Previous topic | Next topic »
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: In re Chu  (Read 1639 times)
Professor
Guest
Re: In re Chu
« Reply #5 on: Aug 30th, 2006, 3:44pm »
Quote Quote Modify Modify Remove Remove

Can another application I am on be used against me?
 
I am a professor at University X and I am an inventor on an application with other professors (inventors) at University Y.  
 
If i file a separate application that is somewhat related in subject matter to the University of X and Y application (not related enough to file as a "child" or "child-in-part"), can that University of X and Y application which is issuing as a patent any day be used against me in an obviousness rejection on the new applicationHuh
 
I was told by the attorney at University of Y that as long as one inventor was shared that I wouldn't have to worry about anything but I don't feel comfortable with that answer and I hoping that you can confirm what he has said.  Is it as simple as submitting a declaration or affidavit that it is "my work" as seems to be suggested in the previous posts?
 
Thank you.
IP Logged
wallflower
Junior Member
**




   


Posts: 96
Re: In re Chu
« Reply #6 on: Aug 30th, 2006, 4:09pm »
Quote Quote Modify Modify

on Aug 30th, 2006, 3:44pm, Professor wrote:
I was told by the attorney at University of Y that as long as one inventor was shared that I wouldn't have to worry about anything but I don't feel comfortable with that answer and I hoping that you can confirm what he has said.  Is it as simple as submitting a declaration or affidavit that it is "my work" as seems to be suggested in the previous posts?

I don't see the relevance of sharing one inventor.  But maybe the inventors of the claimed invention are under a joint research agreement?
IP Logged
Isaac
Senior Member
****




   


Posts: 3472
Re: In re Chu
« Reply #7 on: Aug 30th, 2006, 4:23pm »
Quote Quote Modify Modify

on Aug 30th, 2006, 3:44pm, Professor wrote:
If i file a separate application that is somewhat related in subject matter to the University of X and Y application (not related enough to file as a "child" or "child-in-part"), can that University of X and Y application which is issuing as a patent any day be used against me in an obviousness rejection on the new applicationHuh

 
Yes under at least some circumstances.    
 
As an example, if the application is published or issues as a patent prior to your filing, the reference is available under 102(a) and any of the described work that is not your own invention alone can be cited against you.  You may be able to overcome the rejection by removing the reference.
 
Once the publication becomes available under 102(b) it is available regardless of the fact that it is your invention.  It is fairly common that an application has been published for over a year when it issues as a patent, so the application might already be a 102(b) reference.  Such a reference is not removable by an affidavit.
 
Quote:
I was told by the attorney at University of Y that as long as one inventor was shared that I wouldn't have to worry about anything but I don't feel comfortable with that answer and I hoping that you can confirm what he has said.  Is it as simple as submitting a declaration or affidavit that it is "my work" as seems to be suggested in the previous posts?

 
The attorney's "advice" as you detail it above does not describe  the general case.  Perhaps there are other factors that qualify the advice and perhaps you haven't quite quoted the attorneys advice completely, but you cannot rely on your current understanding.
 
« Last Edit: Aug 30th, 2006, 4:27pm by Isaac » IP Logged

Isaac
biopico
Full Member
***




   


Posts: 434
Re: In re Chu
« Reply #8 on: Sep 16th, 2006, 8:34pm »
Quote Quote Modify Modify

I was told by the attorney at University of Y that as long as one inventor was shared that I wouldn't have to worry about anything but I don't feel comfortable with that answer and I hoping that you can confirm what he has said.  Is it as simple as submitting a declaration or affidavit that it is "my work" as seems to be suggested in the previous posts?  
 
Wasn't the prof Y implying:  
What about under 1999 AIPA and 2004 CREATE ACT?
35 U.S.C. 103/102(e)?
IP Logged

Registered Patent Agent Specializing in All Areas of Biotechnology
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board