Quote from: ExaminerBob on 12-29-20 at 02:55 AM

Quote from: midwestengineer...and (iv) $5-10k in education fees...

I realize this is years late, but I've got to ask..
What are your education fees? I'd guess that it's for the time it takes you to familiarize yourself with the subject matter of an invention. If so, do all attorneys charge for such efforts? Is it typical for such time to account for a third or more of the drafting time?

When I write education fees, I mean time required (i.e., professional fees discussing issues with the client) to educate a client that is unfamiliar with the process of applying for and obtaining a patent.

Quote from: fewyearsin on 12-16-20 at 10:47 PM
I am unaware of anything that would per se or inherently prohibit this.  However, there are several things that may be of concern, including taxation, security of communications, etc.  I know a small handful of people that work remotely in other countries, but I don't know the specifics of their particular arrangement with their firms.

Export controls.

Quote from: JetVet on 12-05-20 at 04:31 AM

Quote from: jeff.oneill on 12-03-20 at 02:01 AM
If you believe that a C-corp would protect you better than an LLC would, then the most cost effective solution would be convert to a C-corp.

Patent infringement insurance exists but is quite expensive.  Here is one example:
https://www.rpxinsurance.com/

For a low risk, it might not be worth it.

Jeff, thanks so much for responding. Appreciate it.

I've been told by both my IP attorney and family lawyer that neither an LLC or Incorporation would protect my assets if push were to come to shove. Thank you nonetheless.

Since I don't have a ton of assets, and the other party is also a small party, it's possible the IP insurance could be written to cover a small dollar of amount of assets. I've sent a quote request to the link you provided.'

I do thank you again.

JV

Please consult with your counsel and carefully consider whether you should be disclosing, even in part, the conversations with your counsels.

Mods- can we lock this thread?

Quote from: dab2d on 11-18-20 at 01:20 AM
When a claim has a closed group, to the exclusion of others, does it have any affect on the DOE analysis.

Example:

A composition comprising: element 1, and element 2 selected from the group consisting of X, Y, and combinations thereof.


I am assuming (barring PHE) that the equivalents of X can still be considered. It is just that the use of "consisting of" has always made me think the group is closed, even to equivalents.   

DOE is still possible with a closed markush group, but it is frequently not as simple as just equivalents of those listed in the group.  Take a look at Internet Inc. v. Merial Ltd and Vehicular Techs. v. Titan Wheel Int'l.

Quote from: prose2020 on 11-12-20 at 03:31 AM

Quote from: ThomasPaine on 11-10-20 at 11:37 PM
Look at Rule 115 (i.e. 37 C.F.R. 1.115).

Rule 115(b)(2) A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include:
(i) The state of preparation of a first Office action as of the date of receipt (§ 1.6 ) of the preliminary amendment by the Office; and
(ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.

Rule 115(b)(3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:
(i) Three months from the filing date of an application under § 1.53(b) ;
(ii) The filing date of a continued prosecution application under § 1.53(d) ; or
(iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application.

My application was filed 1 year back. I forgot to mention this. Apologies.

I did go through "Preliminary amendments" page before opening this thread. This rule is quite vague. "(ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment."

Could you tell me whether you would accept my amendment if you are an examiner?

Thanks

You are outside of the 3 month filing window, so the Examiner can deny it entry on the basis set forth in Rule 115(b)(2).  Whether the Examiner will enter it now can only be determined by the Examiner.  At a minimum, the preliminary amendment must meet all of the requirements for a preliminary amendment.  Even if it does, the Examiner can still deny it entry at this point.

Basically, you're outside of all of the safe harbors and the best answer that can be given is "maybe".

No one can tell you whether they would accept your amendment because your amendment must meet all of the requirements, including those related to form rather than substance alone.  If all of your amendments are reasonable but you screw up the form, entry can be denied.  Consequently, it's not possible to give any meaningful assessment without reviewing the actual amendment itself, which no one can do here.  However, even if someone reviews it and thinks it's ok, that doesn't mean that the Examiner isn't going to think differently.  There is a ton of risk here that can't really be mitigated because you're trying to do something outside of the safe harbors.

Quote from: doop on 10-19-20 at 07:40 PM
I'm trying to understand what is meant by the good fight here.  If the claims are apparatus claims, then the examiner reading the claim using positioned as a product-by-process claim limitation or as adjective would result in the same claim interpretation (a structure with element A inside element B), wouldn't it?  Without the benefit of knowing the actual claim at issue (or reading the Specification), I could see how the term "positioned" seems to imply that element A is being moved into place relative to B whereas "disposed" can imply more of a relative location between A and B, but again, I would need to see the claim itself and the Specification to determine whether or not such an interpretation would be unreasonable.

The good fight is because the Examiner is failing to follow appropriate procedure.  To be a product by process claim, the first word of the clause likely needs to be a verb defining a process to get the product (unless there is some other clear intent from the claim language and specification).  That is likely not present here so interpreting the limitation as being a non-limiting product by process limitation is inappropriate. 

The construction adopted by the Examiner is also likely in conflict with the specification at the very least.  This all sounds like a glorious waste of time and money predicated on the Examiner's misunderstanding of BRI.

Quote from: Rheo on 10-15-20 at 08:04 PM
If there was some type of not-above-board action in getting the patent or the like, the client may feel anxiety that the problem should be dealt with NOW by somehow "hiding" the patent with an abandonment, but the best course of action may be to not draw any further attention to the patent, i.e. just let it go abandoned with inaction.

A statutory disclaimer is not going to "hide" the patent in any way, but will instead draw attention to it.

To add to the potential motivations for client reasoning, an above-the-board action would be contract compliance.  I have had a couple due diligence projects that required disclaimers to avoid breach on execution issues.  Also had this issue arise in an acquisition.

Quote from: mersenne on 10-10-20 at 02:56 AM

Quote from: ThomasPaine on 10-08-20 at 07:13 PMDo keep in mind the ridiculously low bar for a prima facie case of lack of written description support set forth in Hyatt v. Dudas.

Well, the expected happened.  Final OA, repeating the previous OA more-or-less verbatim.  I had argued that it was unreasonable to pick a bunch of random simple phrases and say they were unclear, but not pick some meaning and do an examination on the merits (of a possibly-incorrect assignment of meaning.). I also submitted an expert dec from somebody with good stats (both performing engineering in that field, and managing other engineers working in the field).

Between the two, the Examiner said that I'd overcome some 112 objections, but maintained others.

Anyway, I'm highly inclined to appeal (certainly that in preference to an RCE followed by another worthless round of prosecution).  But I'm unsure whether I should file an AFCP request to try to get a little more  info out of the guy.

Pro: maybe he'll want the points enough to allow the non-broadening amendment of some claim that I will make.  (Ha, ha, I don't really believe that!)

Con: maybe he'll use the opportunity to add some art to the file history and muddy the waters on what he can use in his Examiner's Answer.  (I'm imagining he'd make a willfully obtuse attempt at construing the claims, drop a couple of sort-of-in-the-ballpark references, and say "further search is required.")

The "Con" is that it's a clear signal that RCE is needed, and I'm afraid the Board would affirm (or do something similar) on the basis that the case is not in condition for appeal proceedings.

I would like to have the appeal on the burner and not have to pay both RCE and appeal fees.  (An appeal followed by reopening prosecution is fine, as long as I get the prosecution this time!)  I think that means I skip the AFCP, though.  Am I missing any options?

From your description, it sounds like the Examiner has failed to make his 112(a)/(b) case.  Appeal.  Don't waste your time with a pre-appeal. 

If the Examiner reopens with anything other than a legitimate office action, immediately appeal again and call the TC director.

Quote from: Patent-prosecutor 999 on 10-05-20 at 11:00 PM
I have a somewhat related question:  Consider a US design patent application with 5 embodiments, all properly filed in the original application.  After a restriction requirement; election of embodiment 1; and allowance of embodiment 1; a first divisional is filed while the original is still pending.  The first divisional claims domestic priority to the SN of the parent WITHOUT explicitly incorporating the parent spec in by reference, and only filing the figures of embodiment 2. 
Then, while the first divisional is still pending, a second divisional is filed claiming priority to the parent and now issued grandparent applications, and only filing the figures of embodiment 3, and incorporating both the parent and grandparent applications in by reference.  The first divisional is now issued. 

The Examiner says the second divisional is NOT entitled to priority since the parent (first divisional) did not expressly incorporate the original application in by reference. 
My understanding is that MPEP 201.06(c)(IV) says that a proper domestic priority claim is considered an incorporation by reference.  Am I missing something, or is the Examiner just flat out wrong?  Or, am I wrong?  (Yes, I know that a better practice, in the future, is to also expressly put in an incorporation by reference into the spec.)

The priority claim in the ADS is only an incorporation by reference of inadvertently omitted material.  It would have allowed inadvertently omitted figures/specification in the first divisional to be added without being new matter.  That appears to have not been done.  I would double check in MPEP 217, but it sounds like the other 3 embodiments have been donated to the public.

Quote from: MR on 09-18-20 at 01:38 AM
One potential advantage of using incorporation by reference is the following. Suppose provisional application 1 is incorporated by reference into provisional application 2.  Applicant then decides to pursue a patent on app'n 2, and to abandon app'n 1.   

Potentially, publication of app'n 1 will be avoided if it is incorporated only by reference. Does anyone know whether this is the case?

I believe that this is false under 37 CFR 1.14(a)(1)(iv).

Quote from: novobarro on 08-14-20 at 04:10 AM
We received a first Office Action and the Examiner indicated that we can amend to the supplemental register if we disclaim the first of two words in the mark.  There was also a refusal for merely descriptive so we made arguments and disclaimed the requested word.  We then received a Final Office Action and the Examiner now indicates that we can amend to the supplemental register if we disclaim the second of the two words of the mark.  I think the Examiner mistakenly indicated in the first Office Action to disclaim the first word instead of the second word.  What can be done about this situation?  Call the Examiner?

I would hire an experienced trademark attorney to handle the situation.  It sounds like something important in the first office action was overlooked.  For example, it may be that the disclaimer in the first office action was not properly evaluated.

You can always call the Examiner, which may or may not advance prosecution.  I find trademark examiners to be 60% not helpful, 40% helpful.

If a disclaimer is not necessary for registration, the Examiner is supposed to notify the Applicant in an office action that is not required for registration and allow the disclaimer to be withdrawn.  Of course, sometimes Examiners screw up and don't include such statements in office action.  However, if that isn't in your second office action, then you have much bigger issues to deal with.

Quote from: PHInventor on 09-03-20 at 08:53 AM
With all due respect, I did not post asking for any advice on my patenting or filing strategies, or my IP financing techniques. 

I asked a very simple question about whether anyone else on this forum had experience with cut-rate patent drawing services.

If anyone would be willing to comment on that specific area, I'd appreciate it. 

Thanks.

Like everything else, you get what you pay for.  The lower the cost, the more likely that the drawings will not comply with the requirements, will be incomplete, etc.  This is just a business decision.

I know practitioners that use these services, but the practitioners have experience and can identify when they have been provided with defective figures.  Do you have the knowledge required to judge whether the figures are defective?  What happens if you file defective figures? etc.

Quote from: mersenne on 09-02-20 at 01:57 AM
Sorry, I clearly haven't explained the apparatus claim adequately.  Imagine:

1. An apparatus comprising:
* Part one;
* Part two; and
* Part three, where part three is inserted into part two by the user of the apparatus.

The commercial embodiment (what you will buy from the store shelf) is Part one and Part two.  You'll take it home and put part three in yourself, thus creating a literally-infringing apparatus.  The manufacturer and seller of Part 1+2 can defend against infringement by saying "our product does not literally infringe because it does not include part 3."  Patentee says "you're inducing infringement, because there's no substantial non-infringing use of part 1 + part 2."

The claim I'm asking about is:

2.  A method comprising:
providing part one and part two, wherein part three is added to part two by the consumer.

My concern about the one-step method is based on a vague memory that there's an argument for needing at least two steps in a method, but I don't see any clear support for it in a quick Google.  Perhaps it was just a rule of thumb I was taught back in the day.  Dennis Crouch does have a discussion of an Eli Lilly case having to do with a "functionally claimed one-step method," but it seems to be a much more involved problem than I'm talking about.

Anyway, is claim 2 enforceable?  (Both claims have been issued, btw.)  Is it enforceable against someone selling ("providing") part one & part two, before part three is added?

Single step method claims have been held enforceable.  Check out claim 22 in Thales Visionix, Inc. v. United States.  A few other cases you might find interesting:  Ex parte Kelly, 173 U.S.P.Q. (BNA) 743 (B.P.A.I. 1971); Ex parte Britton,154 U.S.P.Q. (BNA) 321 (B.P.A.I. 1967); Ex parte Macy, 132 U.S.P.Q. (BNA) 545 (B.P.A.I. 1960).

I'm in NoMotivation's camp here and don't see any value in the method claim.  It doesn't cover anything not already covered by the apparatus claim.

Quote from: smgsmc on 08-29-20 at 01:51 AM
(2) With respect to the comments period, does it ever actually result in any actions?  I mean, how many people constantly read the Federal Register to review the list of applicants seeking registration just to spot Applicant X living at Residence Y, and shout out, "That guy's a perv.  He did **** to me when I was 16." (After all, this is not a guy being nominated for the Supreme Court.  )  Otherwise, how would a past victim or witness even know that Applicant X had taken the exam in the first place?

I can only comment on this one.  I have a couple of friends that had significant issues with the comments.  I use to work at a large firm that hired many engineers that eventually took the patent bar.  On more than one occasion, a former attorney of that firm put in comments regarding engineers going through the process (i.e., waiting after passing the test). The comments were problematic and caused the engineers to have to go through a fact finding process with the OED, which eventually admitted them to practice.  Additionally, once the process is initiated by OED, you have to disclose it and all information regarding it to other disciplinary committees such as the state bar if you go on to become an attorney and want to be admitted to practice.

If you need additional details, PM me.

"Can I sue him for infringement of my case?"

Possibly, the test for whether something infringes a design patent is complicated.  Even when there are differences between an article and a claimed design, the article can still infringe the design.  It all comes down to the ordinary observer test, which is very complicated and not a bright line test.  You have to construe the claims, just like a utility patent infringement case.

The title of the design patent really doesn't matter.

"Can someone make just the bottle and be sued for infringement?"

Again, possibly.  It depends on how the claims get construed which is based on many consideration.  Does the lid include any ornamental features? Would an ordinary observer look to the lid or the bottle or both?  etc.