The Intellectual Property Forum

here is the situation:

A Provisional application was filed listing 2 inventors-Boss and Employee, with employee's name listed first.  However, only Boss was an inventor and Employee should not have been included on the provisional at all.  (business relationship only)

Now, Boss wants to file a corresponding Nonprovisional in Boss name only.  Employee and boss are no longer communicating, and employee will not sign paperwork to be removed from Provisional (37 CFR §1.48(e)).  Moreover, since employee is not a true inventor, none of the provisions for an "unavailable or uncooperative" inventor apply.

Question, are there any issues with filing the NonProvisional claiming priority to the provisional with only one of the previously listed "inventors"?  I am concerned that the NP will be filed, and after the provisional has expired we will get a notice from the USPTO stating that the power of attorney and/or new application is not accepted due to the discrepancy in inventorship.

Any assistance would be greatly appreciated.

I filed a patent for a new card game that could be used in a casino.  The claims and the specification require the use of playing cards and a table (think blackjack or stud poker with both the cards and the table).
In the claims, I described a method for playing a game that requires both the physical playing cards and the playing table.  I just received an extremely short rejection of all claims under section 101 and the only rationale given is the following

"Claims are ineligible subject matter because the claimed limitations include no recitation or insufficient recitation of a machine or transformation, or not directed to a proper application of a law of nature, or just a mere statement of a general concept"

I have left 4 messages over the past month for the examiner who has yet to return any calls.  I am willing to amend the claims, but I do not see how I can say that either the cards or the table achieve a "transformation"  so I am wondering if I should just appeal the rejection. 

Any suggestions or advise as to best resolve this would be greatly appreciated.

I just received a notice of abandonment for an application I filed for a client.  Apparently in the notice of allowance the examiner had asserted that one figure in DWG 1 needed to be changed, and for whatever reason the replacement drawing was not submitted when the issue fee was paid (which was on time).

I have looked up the requirements for reviving an unintentionally abandoned application and it says that a statement must be filed with the petition. My question is how much detail does the statement have to contain?  Obviously, I don't want to put anything damaging to myself in the record.  Can I just use a brief statement asserting that the drawing was mistakenly not filed, or do I have to go into extreme detail.

Any advise and/or suggestions for an acceptable statement in this instance would be extremely and gratefully appreciated.

I need to obtain a copy of a patent for an inventor.  He wants an "original" looking one that he can frame, (with the gold leaf and ribbon).
Is this the same as a certified copy?  If not, does anyone know how/where i can order one?

Thanks

I received a notice entitled "EXTENSION OF TIME TO OPPOSE" in regards to a TM I filed. 
Then, I received a call from the potential opposer who wanted to talk about a settlement.

Question,
If I ask for money to drop my TM, can that be used against me in the event they refuse and ultimately file the opposition?

any advise/comments would be greatly appreciated.

I filed a PCT application that claimed priority to a U.S. provisional and Non-provisional application.  Somehow when I typed the date of the provisional application into the request, I put May 15th instead of May 16th, however the year and all other information was correct.

I have now received an invitation to correct priority claim in which I am directed to respond to the International Bureau.  Does this mean I can not file the correction with the USPTO using PAIR? and if so, how do I submit something directly to the bureau?  Finally, is a simple one page document stating the correct priority date sufficient, or is there some kind of a form that I have to fill out.

This was my first PCT application, so I would appreciate as much specific instruction as anyone is willing to provide.
As always, thanks for all the help.  I don't know what I would do without this site!

Can anyone recommend an inexpensive docket management system for a solo attorney?
I am a solo practitioner and I am looking for a docket management system that will allow me to track patent and trademark applications.
So far the cheapest think I found was around $1500.  That seems a little steep.

Any suggestions/recommendations would be greatly appreciated.

Hi everyone,
I am trying to file a PCT application based on a U.S. provisional I filed back in May 09'.  As I understand the PCT rules, are the two options below correct and do I have any alternative options that I am not considering?

1. I  can file a non-provisional U.S. Application claiming priority to the provisional, and then file a PCT application that claims priority to the just filed non-provisional application.  So long as both the non-provisional application and the PCT application are filed no more than one year after the provisional, I will be able to use the filing date of the provisional app (May 09') as my US and PCT priority date.

2. because my provisional application did have claims, I think I can file a new PCT application designating the U.S. and all other countries based directly upon the provisional application.  Then, after filing the PCT application, I have up to 30 months to file National Stage Applications in each country I select.

Are these options correct??  Also, any alternative/suggested courses of action would be greatly appreciated.