Patents are expensive, valuable business properties.  They're expensive to get and very expensive to enforce.  If you're thinking of making relatively inexpensive things in relatively low quantities, it's probably not worth getting one or more patents to protect them.  If you're thinking of seeking venture capital and going bigger, patents (or at least starting the process) is probably essential to attracting capital.

As for several big countries, you have one year from your filing in the US to file in other countries for the same invention.  That give you and any investors time to think about it.  My general recommendation is to only file in countries in which you have some sort of presence to protect and resources to maintain a large litigation.  You can spend a lot of money applying for patents overseas with little or no benefit. 

Oh, and quality matters ... a lot.  There's no partial credit.  Either you've complied with the law and covered your competitors products/services or you haven't.  There's no in between.

Best of luck.

Like others here, it's pretty clearly horrible to include the Internet as a recited claim element, as is including a human user as a recited element of a computer system (I've seen that too).

What I haven't seen mentioned here (sorry if I missed it) is how the claim should mention the Internet.  You claim that inferentially: "sending data through a computer network to a/the second computer" ("wherein the computer network is the Internet" in a dependent claim, if at all).  In effect, you recite how the claimed invention interacts with the computer network without requiring that the computer network be part of the claimed invention.

Regards.

You're free to use dead marks.  If the mark is only recently dead, there's a chance the owner didn't mean to let it die and still uses the mark in commerce.  Remember, though the registration for the mark might be dead, the mark itself might still be in use, though it's unlikely.

Regards.

Quote from: khazzah on 04-07-16 at 11:09 PM

Quote from: Liberace on 04-07-16 at 08:48 PM
I have been told that short appeal briefs are winners, and long briefs are losers.  So I prefer slim opening briefs based on as little that I need to worry about as possible. 

The trick with an appeal brief (as with all legal writing, I suppose) is to cover all the ground you need to, but to make each point in a concise manner.

Here are some ways to avoid an unnecessarily long brief, thus leaving room for real argument:
Do not include

• extensive quotations and string cites to basic anticipation and obviousness case law
• extensive discussion of the entire prosecution history (including withdrawn rejections that aren't being appealed)
• long quoted passages from the references or the Applicant's spec
• quoting the entire claim when only a small piece of it is at issue

I review a lot of appeal briefs, and in most of them, the bulk of the pages are filler like the above rather than substantive argument. In fact, many Appeal Briefs have very little actual argument.

I think this is worth repeating.  Shorter is not better.  Leaner is better.  I've seen responses to non-final Office Actions that go on for pages summarizing case law that is well-known and well-understood.  I find myself skimming, wondering where the part they want to be read is.  I can imagine the PTAB doing the same thing -- skimming for substantive argument and perhaps missing it altogether.

Quote from: Liberace on 04-08-16 at 01:39 AM
Anyway, here is a scenario that helps clarify:

Final Rejection: Shatner (US Patent 5,000,000) teaches using an element with a density more than that of gold to power a phaser.  This density is within the range of claim 1, which uses aluminum.  Therefore, claim 1 is anticipated by Shatner.

After final argument: False.  Check your CRC.

Advisory Action: I did.  Gold has a density of 19.32 grams per cubic centimeter.  Aluminum has a density 2.7.  19.32<2.7, so the rejection is maintained.

Short Appeal Brief: Claim 1 is not anticipated by Shatner.

Examiner Answer: Shatner (US Patent 5,000,000) teaches using an element with a density more that of gold to power a phaser.  This density is within the range of claim 1, which uses aluminum.  Therefore, claim 1 is anticipated by Shatner.  Gold has a density of 19.32 grams per cubic centimeter.  Aluminum has a density 2.7.  19.32<2.7, so the rejection is maintained.

Reply Brief: 19.32>2.7, so the rejection is invalid.

Imagined PTAB: Applicant failed to denote where the argument that 19.32>2.7 is within the Appeal Brief, so this argument is deemed waived.  ?CASE? ?CITE?  Nada. 

Real PTAB: Reversed, thanks for the short brief.

Why on earth would you not argue "19.32>2.7, so the rejection is invalid" in the Appeal Brief?  Just too keep the brief brief?  Shorter is not better.  If it were, the best brief ever would be two words:  "We appeal."  Include your best arguments in their entirety and make it easy for the PTAB to find your arguments.

Regards.

I think things just work out that way.  I worked in a grocery store in the early 1980s.  The store would be empty, then dozens would show up all at once, then it'd be empty again.  Other times, there'd be a relatively steady flow of people all day long.

In short, I don't think it's safe to assume that patent applications are filed at a constant rate.  It's more random than that.

Regards.

FWIW, I'd go with something like "at least one oval component between the round component and each of the square components."

My understanding of "respectively" is that it correlates similarly positioned items in lists.  For example, "wherein the round, oval, and square components are red, blue, and green, respectively" means that the round components are red, the oval components are blue, and the square components are green.

I suppose another way is to recite "one or more oval components, each of which is positioned between the round component and a respective/corresponding one of the square components."  I think "respective" means that no two oval components can correspond to any single square component.  I'm not sure "corresponding" means that.

If it's important that the claim elements have a very specific relationship to one another, I wouldn't rely on "respective(ly)" or "corresponding" but would rather spell it out explicitly.  I think the examples I gave either allow a square component to have multiple oval components between it and the round component or allow a square component to have no oval component between it and the round component.  If you want each and every square component to have exactly one oval component between it and the round component, you might want to say exactly that.

Regards.

Quote from: Spaceman Spliff on 04-04-16 at 11:19 PM
Am I correct that, if I choose to amend, the examiner may uncover new prior art that will cause him to take back the allowable subject matter as well?

Yes.  I've had a case in which allowable subject matter was identified 4 times by 3 different examiners.  My first response tried to get some subject matter that wasn't identified as allowable.  After that, I just kept cancelling rejected subject matter, but the allowable subject matter kept shrinking with each new examiner.  The client was acquired and the case transferred and I never looked up what happened to it.

Regards.

Quote from: smgsmc on 03-25-16 at 10:37 PM
I don't have time to check specific cites, but I believe that there have been a number of Fed Circ cases (including one or two post-Bilski, but pre-Alice) that concluded that the statutory class is not dispositive for 101 rejections.  That is, if method claims are rejected as invalid under 101, then a general-purpose computer (a machine) programmed to perform an invalid method is also invalid under 101, and a CRM (an article of manufacture) storing computer program instructions for performing an invalid method is also invalid under 101.  Could someone confirm whether my understanding is correct or not?  This application fortunately dodged the 101 bullet for the method claims.

That's my recollection as well.  I remember ranting in here somewhere about a case that said that the method claims were non-statutory because they didn't require a computer, then went on to say that requiring a computer in the CRM and computer system claims was insufficient to cure the defect of not requiring a computer.^*

And, yes, it's odd that only the method claims were excluded from the 101 rejection.  For a while, it seemed that method claims were being found non-statutory and other claims just got swept up with them.  I even recommended excluding method claims so as to not taint the other claims -- saving method claims for a continuing application.

Regards.

^*This reminds me of one of my all-time favorite 101 rejections (in the old Walter-Freeman-Abele days).  "Claims 1-n are rejection as reciting software per se.  The claims are cleverly written as a process carried out by a computer, but we know what the applicant is really trying to cover."  My response was something like, "Applicant respectfully submits that Applicant is trying to cover exactly what the claims recite.  Applicant would overcome this rejection by amending the claims to recite a process carried out by a computer, but they already recite that."

Quote from: Robert K S on 03-24-16 at 07:17 PM
Is the opinion publicly available?  I try to keep my eye on the Alice cases, but might have missed this one.

2016-003113
13/743,198

Interesting update:

I just heard back from the PTAB on this case:
http://www.intelproplaw.com/ip_forum/index.php/topic,27692.0.html

The examiner was reversed for failing to present a prima facie case for ineligibility.  I argue that routinely now based on the IEG and the July 2015 Update -- each and every limitation that is not the abstract idea must be identified and why it's not "significantly more" explained and claims should not stand or fall together.  But, in this case (my first brief on Alice), I only argued non-preemption (i.e., significantly more).  Well, I did include a sentence or two regarding inadequate factual findings that were quoted in the decision.  My guess is that the PTAB is seeing briefs arguing that the examiner has not made a prima facie case for ineligibility and those arguments are persuasive.

I was also impressed that the decision came back in less than a year, but then I remembered that this is a PPH case.

I don't think I've ever seen a 101 rejection that makes a prima facie case for ineligibility.  I don't think I've ever seen any non-abstract-idea limitations of any claim identified or even substantive arguments regarding any claim but claim 1.  So, you can always argue failure to make a prima facie case.  I don't know if or when those arguments will ever be persuasive to the examiners of TC 3600, but the PTAB seems to find them persuasive.

Regards.

Hopefully, bartmans or someone else more familiar with EPO practice will step in and correct me if I'm wrong.

If you think you might want claim 3 to depend on claim 2, and therefore include subject matter of claims 1, 2, and 3, you must have that combination disclosed in the specification.  It's not enough to say that the subject matter of claim 1 could also include the subject matter of claim 2 or of claim 3, implying that it could include both.  I've seen a published application from Russia in which the list of possible combinations spanned more than an entire column -- I assume Russia has a similar requirement.

Of course, the claims are part of the specification.  So, you can accomplish that with the MDC as you suggested.  Or, you could just add a claim 4 that's identical to claim 3 but depends on claim 2 instead of 1.  Or, you can just disclose the combination in the detailed description.

Regards.

Quote from: dab2d on 03-22-16 at 01:19 AM
Does this extend to the law firm as well or just the individual attorney?

I don't know, but I doubt it.  It's not uncommon to use ethical walls to separate attorneys within a firm.

By the way, I never understood why "Chinese wall" was racist.  It's a reference to the Great Wall(s) of China -- respecting the powerful effectiveness of the walls.  The image always reminded me of how thorough and complete the separation was supposed to be.  Oh well.

Regards.

Quote from: dab2d on 03-21-16 at 09:29 PM
So this is something I was taught a long long time ago. However I am having a hard time explaining why. So is it an old wives tale, or is there a reason that you do this?

There's a good chance the prosecution attorney will be called as a witness.  It's really awkward to question yourself on the witness stand, particularly if the issue of inequitable conduct or other misconduct is raised. 

Quote from: dab2d on 03-21-16 at 09:29 PM
I thought it had something to do with the duty of disclosure during prosecution that could have some adverse effects on the litigation's AC privilege. 

There may be something to that.  If you're both the prosecutor and the litigator, you may have two conflicting privilege standards.  If you're testifying as a witness, how do you manage that?

Regards.

Quote from: coffeecup on 03-17-16 at 03:15 PM
Because the Taiwan app is the first filed app, I believe I need to claim priority to it for a valid PCT.

I think you're correct here.

Quote from: coffeecup on 03-17-16 at 03:15 PM
Based on my review, I can file a PCT that claims priority to an application filed in Taiwan because Taiwan is a WTO member. The effect of the earlier filing date is that it moves up the 12 month deadline to June 7, 2016, rather than June 10.

Keep in mind it's been several years since I've looked into this issue.  Last I heard, Taiwan was not a member of the Paris Convention but extends similar rights of priority to WTO member states.

If that's true, other countries wouldn't provide reciprocal rights of priority to Taiwanese applications automatically through the Paris Convention.  Maybe Taiwan made an agreement with the WTO as an organization such that WTO member states all recognize Taiwanese priority through that membership.  Maybe Taiwan just agreed to recognize priority of WTO member states to avoid WTO sanctions and it's up to each individual jurisdiction to recognize Taiwanese priority.

I know the PCT recognizes Paris Convention priority.  However, Taiwanese priority is something else.  So, I don't even know if you can file through the PCT at all.  However, it's possible that the PCT will just pass the application through and some individual states will recognize Taiwanese priority through the WTO or through their own laws at the national phase.

Here's what I think you need to do.  Determine in which jurisdictions your client wants to file.  For each jurisdiction, talk to foreign counsel and explain the situation.  You might even consider calling/contacting WIPO and asking how that would be handled and whether non-Paris Convention priority can be recognized at the national phase.

You might end up having to bypass the PCT altogether and file national applications in the countries of interest.  Or, you might have to do that for some countries and would be able to use the PCT for others.

Now, as I said, my information about Taiwan is years old.  Perhaps Taiwan has signed on to the Paris Convention, in which case ignore everything I've said and file in the PCT. 

Regards.

Quote from: dab2d on 03-19-16 at 07:40 PM
It isn't like ... you prevent the parent from being a reference. You only get the date in which the new matter was filed.

We went through that in some detail here:
http://www.intelproplaw.com/ip_forum/index.php/topic,28493.0.html

I think you avoid the parent being prior art as long as you file the CIP within a year of the parent's publication.

Regards.