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Messages - njiplawyer

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1
Patent Litigation / Re: Provisional Rights - What if infringement stops before the patent issues?
« on: 02-22-12 at 08:18 am »
Quote from: bleedingpen on 02-22-12 at 05:15 am

I think yes.  The statute says nothing to make me think otherwise, though that language about ending on the date of patent issuance is kindof funny.


I agree.  There doesn't seem to be any case law directly addressing this topic, and nothing in the statute makes me believe that infringement must continue after the patent issues to recover damages under "provisional rights."  Thanks for the help!

2
Patent Litigation / Re: Provisional Rights - What if infringement stops before the patent issues?
« on: 02-22-12 at 05:43 am »
Quote from: Simpletown on 02-22-12 at 01:31 am
Not impossible, but damages seem unlikely given that the idea was still a secret as a provisional application while the other company practiced it. Further, how can you put a company on notice that they are violating a patent when no-one even knows if it will ever issue, and if it does, in what form? You can inform them of the provisional or patent application publication and say it is patent pending, but that doesn't count for much. See the following link. Basically you can't get much until you have an issued patent in your hands. Best to go for one of the expedited routes to getting a patent if you are facing such an issue.

http://www.uspto.gov/web/offices/pac/mpep/documents/appxl_35_U_S_C_287.htm


Thanks Simpletown.  Just one point of clarification.  This is not a provisional application, it's a non-provisional utility application that was published.

3
Patent Litigation / Provisional Rights - What if infringement stops before the patent issues?
« on: 02-21-12 at 03:07 pm »
Hello All,

Would a patentee be able to recover pre-grant damages under "provisional rights" in the following scenario?

1.  Applicant's utility patent application is published. 
2.  Applicant becomes aware of Company selling Product covered by the published claims.
3.  Applicant puts Company on notice of the published application, and informs Company that Applicant will pursue legal action if a patent issues from the published applicaiton.
4.  Company continues to sell the Product for a year, then stops before the patent issues.
5.  Applicant's patent application eventually issues as a patent and the claims issue as published (without amendment).  The patent issues after the Company has stopped selling the infringing Product.  At the time of issue, the Company is no longer selling a Product that infringes the claims.

Can the Applicant pursue pre-grant damages against Company gonig back prior to the issue of the patent, if Company stopped the infringing activity prior to the patent issuing?

Any help on this topic would be tremendous.  Thank you!

4
Patent Filing and Prosecution / Re: Incorrectly Paid Small Entity Fee for a One-Month Extension of Time
« on: 09-28-11 at 12:51 pm »
Quote from: klaviernista on 09-28-11 at 12:13 pm
Issues I see:

1)  Did you assert small entity status by paying the small entity extension fee?

A-  I say no.  37 C.F.R. 1.27(c)(3)(ii) specifically states that the payment of a small entity fee other than the basic small enetity filing fee is not considered a written entitlement to small entity status.

2A)  Did you assert small entity status by checking a box on the petition for EOT correlating to small entity?

A-  Maybe yes, maybe no.  37 C.F.R. 1.27 says that small entity status may be established by a written statement that is "clearly identifiable," is "signed" and which "convey(s) the concept of small entity status."  Depending on the text next to the box you checked, it is possible that the petition constituted a written assertion of small entity status.  See MPEP 509.03 ("The written assertion can be made in any paper filed in or with the application and need be no more than a simple sentence or a box checked on an application transmittal letter.")

2B)  If small entity status was asserted improperly, how can that be addressed?

A-  See MPEP 509.03(X) - make sure you include a statement somewhere that the assertion of small entity status was made in error and without deceptive intent

To be continued



This makes a lot of sense, thank you!  I think the key issue is your question 2A.  What we did was select a check box on form PTO/SB/22 requesting the one-month extension.  On the form there are two columns listing fees, one listing "fee" and the otherlisting "small enttiy fee."  Right next to the columns is a text field for entering in the fee.  We entered the small entity fee in the text field, but we did not check a box stating we were a small entity.  So the answer to question 2A is debatable...but I'm leaning toward answering "no," because we did not affirmately state we are a small sentity.

5
Patent Filing and Prosecution / Re: Incorrectly Paid Small Entity Fee for a One-Month Extension of Time
« on: 09-28-11 at 11:56 am »
Quote from: MLM on 09-28-11 at 11:23 am
Don't request a refund. For one thing, refunds are for overpayments, and you underpaid.

If the applicant status is large entity, and you have not specifically requested a change of status to small entity, then the PTO should assume that you underpaid and should automatically deduct the difference under the preauthorization. Best thing is to call and ask what to do, but I think you should be OK without doing anything. Just check and make sure that they deduct the right amount.

Well, I'd prefer not to be in a situation where we request to be charged an additional $75 and have to monitor the status to make sure they charge us the extra fee.  Rather than waiting around, I think I'd rather just pay the $150 now and ask for the refund of the original $75.  That way, at least I'll know that the fee has been paid and we don't have to keep monitoring the status of when they will charge us the extra $75.

Also, I did call the USPTO twice regarding the first-month vs. second-month fee issue, and unfortunately I got two seperate answers.  One agent told me we would need to pay the second month fee, the other agent informed me we would only have to pay the first.

6
Patent Filing and Prosecution / Re: Incorrectly Paid Small Entity Fee for a One-Month Extension of Time
« on: 09-28-11 at 11:05 am »
Quote from: khazzah on 09-28-11 at 10:39 am
Quote from: njiplawyer on 09-28-11 at 09:37 am
The deadline for filing a response to an office action was yesterday, which required the fee for a one month extension of time.  We paid the fee for the one-month extension of time, however we mistakenly paid the small entity fee ($75) and not the large entity fee ($150).  However, we did check the box on the petition form stating that the "Director is hereby authorized to charge any fees which may be required, or credit any overpayment, to Depsit Account Number (our number)."

I don't see a problem. The PTO will deduct an extra $75 from the account, as you authorized them to do in case of an underpayment. That's exactly the scenario the preauthorization is intended to cover.

That said, it wouldn't hurt to call the PTO helpdesk to confirm my understanding.

The only problem is that we selected "small entity" on the petition form, so the USPTO would have no way of knowing we paid the incorrect fee unless we notify them. 


What I'm considering doing is requesting a refund of the $75 and at the same time submitting a supplemental petition with a payment of the $150 fee.  I'd also add the standard lanugage above in case we need to pay the second month.  What do you think?

7
Patent Filing and Prosecution / Incorrectly Paid Small Entity Fee for a One-Month Extension of Time
« on: 09-28-11 at 09:37 am »
Hi,

The deadline for filing a response to an office action was yesterday, which required the fee for a one month extension of time.  We paid the fee for the one-month extension of time, however we mistakenly paid the small entity fee ($75) and not the large entity fee ($150).  However, we did check the box on the petition form stating that the "Director is hereby authorized to charge any fees which may be required, or credit any overpayment, to Depsit Account Number (our number)."

My questions are as follows:

1)  Procedurally how can we handle this?  Can we just submit a supplemental filing stating that the Director is authorized to charge the difference ($150 - $75 paid = $75 additional) to our deposit account?  Alternatively, do we have to request a refund of the original amount paid ($75) and pay the correct amount ($150)?

2) Because we filed it yesterday, but the fee was wrong, can we still pay the one-month extension fee or will we now have to pay the two-month fee ($560)?  I called the USPTO and got two different answers to this question.  I've been trying to look in the MPEP for a section that covers this, but I've had no luck.  Is anyone aware of a section in the MPEP that discusses this issue?

Thank you so much for your help!!!!!

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