The Intellectual Property Forum

Hey guys, any thoughts as to how the job market is for a newly minted graduate with an MS in ME and 8+ years of CS experience. I have passed the state bar and am preparing for the patent bar. I have been working full time during my education and also gained more than 2 years experience in the IP field -- electromechanical patents and trademarks. Any advice on the job prospects and how to approach the job search.

smgsmc:  Thanks!  You saved me a little embarrassment.  That case is not (yet!) in my “fave binder”.  And, uninformed by UR post, I would have, a priori, responded quite differently.  Will check case tomorrow.  Very curious how recitation of “at least one” with conjunctive excluded a combination. Didn't do well in high school grammar.  Maybe why I personally use traditional-stiff-and-stilted  “Markush” language and end w/ … and a/any combination thereof / of them (if intended).  It's only a few extra key strokes 

Even though many experienced patent attorneys I know absolutely do not like Markush (and some believe incorrectly it's peculiar to the chemical arts), I'm convinced it's the best way to go (whether in the chemical arts or not).  I personally don't care for "and any combination thereof", so I use

"...at least one element selected from the group consisting of A, B, and C"  when I want the scope to cover

(I'm using "element" as the element of a set, not as a chemical element)

one or more A,
one or more B,
one or more C,
(one or more A, one or more B),
(one or more A, one or more  C),
(one or more B, one or more C),
(one or more A, one or more B, one or more C).

Lets say patent A is for an ankle brace;
Patent B is for a knee brace that has an adjustment band (patented adjustment band that is);
BUT there is NO patent C on the market that combines the A - ankle brace with the B  adjustment band like the knee has

if my ankle brace with adjustment simply combines these two patents is the resulting C a patentable idea?

Maybe. Maybe not. Virtually all patent applications are for combinations of existing elements. So the fact that the elements are already known won't itself prevent a patent on the combination.

That said, you won't get a patent unless you can convince the Examiner that the combination of known elements is NON-obvious. Many combinations of known elements are deemed to be obvious, and thus don't issue as a patent. Obviousness is a very complex subject, and you're not going to get a simple answer here on a public forum.

BUT if someone refines BOTH patents and comes up with a unique design of a fork that looks like a spoon AKA "spork" then I assume this is patentable...right? 

Same answer. Depends on whether the combination of spoon and fork features is deemed to be NON-obvious.

Could you please teach me how the pre-appeal you mentioned below was done?

Here are a few patent blog posts about the Pre Appeal Brief Conference (PABC) procedure.

http://trentostler.com/blog/pre-appeal-brief-conference/
http://www.pugetpatent.com/blog/2011/6/pre-appeal-brief-conference/
http://www.pharmapatentsblog.com/2010/11/19/is-preappeal-brief-review-worth-the-effort/
http://www.patentlyo.com/patent/2010/11/how-effective-are-pre-appeal-brief-conferences.html

I have an idea for a business I would like to use the image of a red balloon as a brand. It would be an allusion to the film The Red Balloon and draw on the films use of a red balloon as a symbol for childhood hopes and dreams.

1. Is this a problem?
2. Would I be able to use the phrase "red balloon" without issue?
3. What about using the image of a young boy and a red balloon? Would that be an issue?

Thanks

My trademark seems to be available in the US but not in some countries in Europe. Is their any way i could work around this?

The trademark registered in Europe is for the same use, Clothing (25).


I want to be able to sell my logotype witch is based on a stylized word. This word mark seems to be available in the USA but not in Europe.

Would this limit my sales to the US only?


Thanks,
Victor

smgsmc:  Thanks!  You saved me a little embarrassment.  That case is not (yet!) in my “fave binder”.  And, uninformed by UR post, I would have, a priori, responded quite differently.  Will check case tomorrow.  Very curious how recitation of “at least one” with conjunctive excluded a combination. Didn't do well in high school grammar.  Maybe why I personally use traditional-stiff-and-stilted  “Markush” language and end w/ … and a/any combination thereof / of them (if intended).  It's only a few extra key strokes 

Student:  Like many hypothetical claims posted here - including those from me - the OP’s hypo maybe had a few “warts”.  I interpreted the question as I answered it (prosecution), smgsmc interpreted and answered from post-allowance POV. 

In my view, your “intuition” is 101% spot on: always claim what something is, not what it does, not why it’s there.  Such should be clear from your specification, supplemented by knowledge in the art. Yes, that may be a lot of drafting.  But IMO that's the job.   

However, “functional limitations” are allowable and can be accorded some weight, if they are not the point on which patentability of the claim rests.  The “for heating” in “a heater for heating” or “for propelling” in “a jet engine for propelling” IMO don’t limit “heater” or “jet engine”, they just (superfluously and unnecessarily) recite what those elements are known to do.  And if you don’t need the function of the element, the element really doesn’t belong in the claim anyway. 

Disclaimer:  I practice in the life sciences and mechanical arts.  The situation re: functional limitations may be different in other arts.

I've found good leads on Craigslist!!  I also use PatentlyO, Indeed, and the local bar association job boards. 

Sorry for the late reply, but I have to say, yes, if you want to have a law school, contracts 101 discussion, then there may be failure of consideration. 

In the real world, though, when someone says, "you have my permission" and then someone acts on that, there is permission.  We can (and do) call that permission "a licenses".  Whether the underlying legal theory is contract, detrimental reliance, estoppel, acquiescence or something else is really an academic discussion.

- Jeff