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Messages - Lefty714

#1
You could try www.freepatentsonline.com. If you click on "Search" in the ribbon near the top of the home page, you can see a multitude of fields by which you can search (including inventor name). I guess another option is to search his name on google patents.
#2
If I understand the scenario, it is:

U.S. Provisional = 1st app
Foreign Non-provisional = 2nd app filed w/in one year of the U.S. Provisional
U.S. Non-provisional = 3rd app filed w/in one year of the Foreign Non-provisional, but more than one year from the U.S. Provisional.

By the time the U.S. Non-provisional is filed, the U.S. Provisional has expired. The U.S. Non-provisional cannot directly claim priority to the U.S. Provisional.  However, there is no problem for the U.S. Provisional to claim priority to the Foreign Non-provisional and to claim priority to the U.S. Provisional through the Foreign Non-Provisional.

By the way, I agree with smgsmc that filing a PCT w/in one year of the U.S. Provisional is an easy way for the later filed U.S. Non-provisional as a national stage app in the U.S. to claim priority back to the U.S. Provisional.
#3
One instance:  You need to file a PoA in order to sign a Terminal Disclaimer as a registered practitioner. The rules don't allow someone "in a representative capacity" to sign a TD. Of course, the applicant can sign the TD, so a PoA is not technically required in the case. I just find that sometimes it's easier and quicker to sign a TD myself.
#4
Here's the situation:  Applicant files an intent-to-use application in the U.S. for registration on the Principal Register.  Applicant subsequently files a number of foreign applications claiming priority to the U.S. filing. The mark in the U.S. is refused registration for being merely descriptive. During prosecution, Applicant files an acceptable Allegation of Use. Applicant then amends the U.S. application to the Supplemental Register. It is understood that the effective filing date will change based on the filing date of the acceptable Allegation of Use.

My question is this:  Does an amendment to the Supplemental Register have any detrimental effects (other than the obvious effects of changing of the effective filing date of the U.S. application and the descriptiveness issue) on the pending foreign applications?
#5
I have been in this situation before, but I just want to cover all the bases. In a particular case, we filed a Notice of Appeal, paid the fee, and concurrently filed a Pre-Appeal Conference Review Request. The decision on the Pre-Appeal was to re-open prosecution. We subsequently received what amounts to nearly the same bases for rejecting the claims as we had received prior to filing the Pre-Appeal. Now we want to file a full-blown appeal. My understanding, based in part on the relevant statute, is that once the Notice of Appeal fee has been paid, any subsequent appeal request does not require paying the fee again ("An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 35 USC 134).  My question is:  do we need to refile a Notice of Appeal prior to filing the Appeal Brief or can we just file the Appeal Brief in response to the pending Office Action without filing the Notice of Appeal form?
#6
Quote from: Robert K S on 01-31-19 at 01:42 AM
I didn't even realize it was possible to lodge an objection in a notice of allowance.  Why wouldn't that be an Ex parte Quayle action?
That's an excellent question and one I never looked into.  Particularly, if a drawing objection is made, it appears in the Notice of Allowability.  After missing it once, I make sure to check for any outstanding obligations mentioned in the Notice of Allowability to prevent an unintended abandonment.
#7
I was in this exact same situation before. Everything you filed is the same as what I filed, and the situation worked out for my client.
#8
You are not out of luck. See 37 CFR 1.78(a)(4):  The reference [to the provisional in a corrected ADS] required by paragraph (a)(3) of this section must be submitted during the pendency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application.

Thus, you have until 4 months after filing or 16 months after the filing of the provisional, whichever is later, to correct the priority, without having to file a petition. You only need to file a corrected ADS. I would do this ASAP. If you are outside that 4-month/16-month window, bluerogue is correct:  You have to file a petition, and the fee with that petition is probably close to $1000 at this point.  Not only that, keep in mind that the petition to correct the priority requires a statement that the delay in correcting the priority was unintentional.
#9
If you are claiming priority to a prior foreign application, this needs to be included in the "Foreign Priority" section of the ADS, not the "Domestic Benefit" section.  Domestic Benefit is only for 1) claiming priority to a prior U.S. filing, or 2) claiming priority to a PCT designating the U.S either as a national stage application or a continuing application.
#10
A couple of cases that have helped me in the past are:  Catalina v. Coolsavings, 289 F.3d 801 and Corning v. Sumitomo, 868 F.2d 1251. As can be expected, when these opinions discuss whether terms in the preamble limit the scope of the claim, they provide a number of other case law references as authoritative support that might also be helpful for you to dig through. Understand that most of the case law I have read regarding this concept stresses that determining the effect, if any, of the preamble language is highly fact-specific.
#11
It's very simple. The person needs to go to my.uspto.gov and set up an account. Once that's done, you can use the sponsorship tool to sponsor that person.
#12
I have had a similar experience so far. I have had to do the two-factor authentication twice--each on separate days, although signing in today took me straight to Private Pair without having to perform the two-factor authentication. It also seems like the time-out function happens more quickly than it used to. I also noticed that there is no time-out notice which can be a bit frustrating.
#13
These are my last two cents on the matter.  First, each time period has a beginning and end. If there is an end, there has to be a beginning. Rule 97(b)(3) establishes the beginning of the time period as the filing date of the application. The end of the time period is the date of mailing of the first office action.  This is the same as 97(b)(4). The beginning of the time period is the filing of the RCE and the end of the time period is the date of mailing of the first office action after filing the RCE. I just don't see any other way to read it that makes logical sense.

Second, and I want to be very clear that I have no authority to support this, but if you don't comply with Rules 97/98, I don't see how you could argue that you have complied with Rule 56. This is the only logical way for me to look at the situation. It appears that you want to do a couple of things: 1) make Rule 56 a purely mechanical effort of filling out a form and filing it; and 2) you are reading out the entire purpose of Rule 56, and you are wanting to make Rule 56 mutually exclusive of Rules 97/98. To explain, if compliance with Rule 56 is merely filing the IDS form, there would be no time periods established in which the Office will consider the IDS or not consider it. In my view, there would be no point in having Rule 97 if filing the IDS at any time complies with 56. More importantly, the purpose of Rule 56 is to provide the Office/examiner with all of the information that everyone involved in the prosecution knows about that may be relevant to patentability. If you file an IDS when you know it will not be considered by the Office/examiner, the purpose of Rule 56 is defeated. The decision to allow the claims has not been made after considering all of the information known that may be relevant to patentability. If anyone can persuasively convince me otherwise, I just might change my view.

Lastly, I don't think it matters whether you withheld the information until after prosecution has closed or whether you just learned about the new references. The rules do not make any concession and do not address when the references were first known. Again, if you file an IDS, even one with references you just learned about that were cited in a related foreign case, when you know that the Office will not consider those references, I don't believe you can say you have complied with Rule 56. Rule 56, in my opinion, has to be read in the context of Rules 97 and 98. If not, then rules 97 and 98 are superfluous and unnecessary, and compliance with Rule 56 is purely mechanical in nature: fill out the IDS form and file it.

Please take what I have to say with as much salt as you require, whether that be a grain, a boulder, or somewhere in between. 
#14
Although I have heard and read people saying that filing an IDS after prosecution has closed and without filing an RCE fulfills the duty of disclosure, I would not choose to do this. An IDS that you know will not be considered by the examiner just provides fodder when attempting to enforce the patent, especially if there are one or more truly relevant references in the IDS. 

As far as your understanding of the time period for filing an RCE and IDS, I don't believe you're reading that correctly.  The IDS will be considered without paying the fee or having to make a certification statement if the IDS is filed "before the mailing of a first Office action" but "after the request for continued examination." Thus the IDS should be filed after filing the RCE but before an Office action is mailed.

You may want to look into the QPIDS program which allows for the filing of an IDS after close of prosecution. You have to also file an RCE and pay the fees for the IDS and RCE. The IDS will be considered by the examiner. If the claims are still allowable over the references in the IDS, the Office is supposed to refund the RCE fee. If the claims are not allowable over one or more references in the IDS (according to the examiner), prosecution will be reopened as it normally would be after filing an RCE.
#15
Quote from: Robert K S on 08-09-18 at 08:14 PM
BTW, I think it used to be that you had to file separate terminal disclaimer forms and hence pay separate fees for each other patent you were disclaiming against, but now it is possible to disclaim against multiple patents with a single fee.  Isn't that right?

See MPEP 804.02(IV) - "To avoid paying multiple terminal disclaimer fees, a single terminal disclaimer based on common ownership may be filed, for example, in which the term disclaimed is based on all the conflicting, commonly owned nonstatutory double patenting references."

Also, go to https://www.uspto.gov/patents-application-process/applying-online/eterminal-disclaimer, which states "Each eTerminal Disclaimer filed requires a single terminal disclaimer fee, but can include up to 50 'reference applications' and 50 'prior patents.'"

I only know this because I had to look it up earlier this week. We would normally just use the fillable PDF form which does not appear to allow inclusion of multiple patents. I suppose as an alternative you can make your own terminal disclaimer form so that you can include multiple patents if necessary.


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