Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  

News:

New registrations are now permitted.

Pages: [1] 2 3 4 5 6 ... 10
 1 
 on: Today at 06:20 am 
Started by Patentstudent - Last post by Patentstudent
Thank you, Rabid Levity.
Your reply and the link to the blog entry by Nutter McClennen & Fish LLP are very helpful.

 2 
 on: Yesterday at 10:26 pm 
Started by cheesepep - Last post by cheesepep
Let's say I have three assignees for a single patent each with 1/3 power.

Do I file three separate assignments each saying 1/3 or have one assignment that lists all three companies there and listing 1/3 for each?

Thanks!

 3 
 on: Yesterday at 09:44 pm 
Started by Patentstudent - Last post by Rabid Levity
... there are compelling reasons ...to let Company B file the national phase applications directly, if possible.

Hmm... well, assuming A has proper assignments from the inventors for the priority and PCT application filings, can you have A assign all its right/title/interest to B for only AU/KR in the invention described in [identification of DE and PCT apps]? 


As an aside, I recall seeing situations (UK or DE or maybe EPO) where argument were made that such a local-owner-filed app was not entitled to the original priority claim because the assignment gave that local owner title to the invention in the designated countries and the right to file in those countries, but it did not specifically call out the right to claim priority back to the original filing, which was still owned by the original applicant along with whichever countries it had kept to itself.  So while it is always a good idea to have a separately recited rights to claim priority back to priority apps in your assignments, in situations like this where for some countries where there is a break in ownership between original filings and later national-level filings, it could become very important.


I could not find the case I was thinking of but here is a blog entry by Nutter McClennen & Fish LLP mentioning the distinction between owning an application vs. owning right to claim priority.

http://www.lexology.com/library/detail.aspx?g=5118c921-8c93-46be-88fb-0d3f0e00f4fb
"Another concern addressed by the assignment document is the claim to priority. In Europe, a patent owner must have actual ownership of a priority right when making claim to it. This priority right is distinct from the ownership right and can be transferred separately. Thus, the transfer of a right to priority must be spelled out in the assignment. "

 4 
 on: Yesterday at 07:31 pm 
Started by Retarius - Last post by i_am_pro_se
Quote
I went back to the client and recommended appeal (which I believe would have been slam dunk victories - other issues as well), but the client didn't want to appeal because of waiting time prior to PTAB decision.

The Examiner doesn't know the motivation for not appealing.

Why not appeal just one of the applications?  Pick your strongest appeal case.  Puts the Examiner on notice that your client IS willing to appeal, which will perhaps help your other applications, AND gets the clock ticking on appeal process.  Since you have multiple related applications going, you can continue pursuing parallel tracks, and therefore still expedite an allowance as requested by your client.

 5 
 on: Yesterday at 07:19 pm 
Started by i_am_pro_se - Last post by i_am_pro_se
Thanks for the informative response!

Quote
If by "not clear" you mean that it's not immediately apparent who is right about the 101, you or the Examiner, i.e., it's a close call .... then Yeah, the pre-appeal conferences of 3 Examiners should tell your Examiner to stick to his guns rather than withdrawing the rejection.

Personally, I do not like to include 101 arguments in a Pre-Appeal because 101 law is in a tremendous amount of flux. I think Examiners are going to stick to their guns and let the Board decide.

That's precisely what I meant by "not clear".  This patent application involves software, so with 101 law being so ambiguous, it's difficult to reach the bar of a "clear error", as required to get an allowance from a Pre-Appeal.

Quote
That being the case, I think inclusion of a will-definitely-be-ignored 101 argument pulls attention away from my well-written-and-convincing 102/103 arguments.

Agreed.  However, after noodling the specifics re the 101 rejection, I believe I can make a clear argument for patentability of all claims except for one.

So, the question is: If I argue for all claims except for one, is it possible to get an allowance from Pre-Appeal on all but that one claim?

And back to my original question (for my own understanding): When multiple rejections are argued in a Pre-Appeal, and ONE argument doesn't hold, does the case go to the appeal track?  What factor(s) decide whether a given Pre-Appeal receives another office action vs. continues on appeal track?

 6 
 on: Yesterday at 06:26 pm 
Started by i_am_pro_se - Last post by khazzah
Contemplating filing a pre-appeal brief conference request.  The application stands rejected due to 101 and 103. 
...

My goal in filing a pre-appeal brief conference request is to receive either: an outright allowance, or another office action.  I do not want the case to continue on the appeal track.

Question: In the request, should I assert the 101 arguments, or remain silent?

If you don't argue the 101, you will not receive a Notice of Allowance because you haven't overcome the 101.

But since you indicated another Office Action is acceptable to you, I say argue only the 103. Best case scenario, you convince the Examiner he's wrong about the current and he issues another Office Action in which he (certainly) maintains the 101. The new OA may also have a 103, either a better articulated version using the same refs, or a new one using different refs.

The concern is that the presence of 1 or more arguments deemed "not clear" will automatically send the case to the PTAB.

There is no "automatically send case to the PTAB." Moving the case on to the PTAB isn't the PTO's call. Instead, that's an action you choose to take by paying the appeal forwarding fee. The Examiner's choice is to respond with an Answer, or re-opening pros.

So maybe your strategy is based on an improper understanding of the appeal procedure.

If by "not clear" you mean that it's not immediately apparent who is right about the 101, you or the Examiner, i.e., it's a close call .... then Yeah, the pre-appeal conferences of 3 Examiners should tell your Examiner to stick to his guns rather than withdrawing the rejection.

Personally, I do not like to include 101 arguments in a Pre-Appeal because 101 law is in a tremendous amount of flux. I think Examiners are going to stick to their guns and let the Board decide. That being the case, I think inclusion of a will-definitely-be-ignored 101 argument pulls attention away from my well-written-and-convincing 102/103 arguments.

 7 
 on: Yesterday at 05:36 pm 
Started by mintfrost - Last post by mintfrost
Hello everyone! I'm a newbie here.

I've been working as a patent translator (J-E, K-E) for a few years, mostly in chemical/materials, my background is in Chemistry.

I recently got an offer for patent agent trainee position from a small IP boutique in Canada (I live in Canada)... I had a meeting with three partner agents at the boutique, and they are interested in having me as a trainee, doing 2 years of apprenticeship at their boutique until I become eligible to write the patent bar. I haven't signed anything just yet. They seemed interested mostly in my language skills, and asked how I feel about travelling to Korea or Japan (once or twice a year, business trips)...

This boutique has 3 partner agents, 2 trademark agents and 7 paralegals & technical advisors, and one US patent lawyer as council. So they do mostly pros & preps. My question: at a boutique of such composition - would there be a lot of prior art search to do, in Korean & Japanese patent databases?

I was just wondering if there is anyone on this forum who is/had been a trainee and could tell me what working as a trainee is like. What did you do, what was the most difficult part, or what would you have done differently (if you have such regrets) during your training years, etc.?

If you're an agent/attorney yourself, please advise from the patent agent/attorney's perspective. If you were to hire someone like me, what would you expect the most from said someone...?







 8 
 on: Yesterday at 05:30 pm 
Started by i_am_pro_se - Last post by i_am_pro_se
Contemplating filing a pre-appeal brief conference request.  The application stands rejected due to 101 and 103. 

The 103 rejection is clearly improper due to irrelevant references cited and therefore incorrect arguments against claims.

However, although I also believe improper, the 101 rejection is a bit more grey.

My goal in filing a pre-appeal brief conference request is to receive either: an outright allowance, or another office action.  I do not want the case to continue on the appeal track.

Question: In the request, should I assert the 101 arguments, or remain silent?  The concern is that the presence of 1 or more arguments deemed "not clear" will automatically send the case to the PTAB.



 9 
 on: Yesterday at 03:23 pm 
Started by jdeirmendjian - Last post by jdeirmendjian
Thanks to all for the input. Here's what I'm trying right now, in terms of an argument.

The Ex. says this: “subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable.”  She goes on to assert that, out of a set of four allegedly distinctive inventions claimed, one of them has a conceivably distinctive utility.  However, given the nature of the invention, it doesn't seem that the utility she mentions is actually something of which the aspect she's citing is capable. I need some more technical help to really assert with confidence that this is the case, but I'm pretty sure at this point that I'm right, or at least that it can be persuasively argued so.

If I am right, the question becomes whether or not this a potentially promising direction. Any takers?

Next: I'm dealing with the second part of the OA/RR, which basically is a completely generic assertion to the effect of "Inventions I-IV are related as process and apparatus for its practice" wherein "in this case, process can be practiced by another materially different apparatus."  The Examiner fails to specify, however, what is related on this score to what, and beyond that, I'm not even entirely sure what this could possibly mean in this case, or how it should matter. Any help here?

Did begin reading through MPEP 800 BTW -- intend to do more as I continue to construct this response.

 10 
 on: Yesterday at 03:18 pm 
Started by Patentstudent - Last post by Patentstudent
Thank you for your reply.
I agree with you that it would normally be better to follow the safe route.
However, in this case there are compelling reasons (about which I can't share information on the forum) to let Company B file the national phase applications directly, if possible.

Pages: [1] 2 3 4 5 6 ... 10


Footer

www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com

Page created in 0.108 seconds with 18 queries.