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 11 
 on: Yesterday at 03:03 pm 
Started by Spaceman Spliff - Last post by Spaceman Spliff
I'm in a situation where a patent is being asserted against an accused product by relying upon the doctrine of equivalents. However, this product was sold before the priority date of the asserted patent and has not changed in any functional or substantive way that would affect the infringement allegations. I'd like to use a sample of the product from before the priority date (which again, is the exact same thing as the accused product) to invalidate the patent.

It's my understanding that the doctrine of equivalents doesn't apply to 35 USC 102 and that anticipation by equivalents isn't allowed. How would I structure this for the elements where the accuser relied upon DOE to make his argument?

 12 
 on: Yesterday at 02:57 pm 
Started by ralphael - Last post by lazyexaminer
"Patent Prosecution Highway"

https://www.uspto.gov/patents-getting-started/international-protection/patent-prosecution-highway-pph-fast-track

 13 
 on: Yesterday at 02:42 pm 
Started by ralphael - Last post by ralphael
There has to be some procedure where if you've filed and/or have been granted a patent in US you don't have to go through exactly the same lengthy process in, say EU. ...right?

 14 
 on: Yesterday at 02:38 pm 
Started by ralphael - Last post by ralphael
You mean the wait time to have my application filed to the patent office? If so those numbers sound great.

 15 
 on: Yesterday at 02:21 pm 
Started by ralphael - Last post by Robert K S
The typical patent practitioner has a backlog of work and will prioritize the drafting of your application amongst other work depending on due dates, bar dates, etc.  If you have no bar dates and the likelihood of someone else filing on the same invention in the near future is small, one to three months may be a typical wait time to have your application filed.  If your bar date is coming up in three days, and the practitioner is willing to devote all his/her time to your case, it can probably get filed in time, but it may not be up to the practitioner's preferred standards of quality.  If the filing is not an emergency, but you insist on urgency and are willing to pay for expedited work, one to two weeks seems like a reasonable wait time.

 16 
 on: Yesterday at 12:46 pm 
Started by fortiz303 - Last post by Toot Aps Esroh
Agree with above.  Now, if the inventor invented it in the 1970s but kept it secret all that time, then provided you (nowadays) the secret in some sort of confidential business relationship, the inventor may be able to file for patent application.

 17 
 on: Yesterday at 12:32 pm 
Started by Art1 - Last post by still_learnin
In the office action the claim was rejected based on plain 102 prior art, however during an interview the examiner said that my invention is "an equivalent of the prior art" and pretty much falls under the "doctrine of equivalents". When I objected and stated that I don't see how doctrine of equivalents may apply in this case, and "pretty much" doesn't mean "exactly the same"  she argued that the prior art accomplishes "equivalent result".

That's usually Examiner-speak for "I'm interpreting your claim term in a broad manner, and under this broad interpretation, your claim term reads on the prior art."

Although after reading the rest of your post, I'm inclined to say it's Examiner-speak for "just a few vague statements from the prior art actually teach quite a bit to a person of ordinary skill in the art."
My method has a step of: granting a  right to perform [X] wherein the granting comprises expressly conveying a right to do [X]. My specifications state that conveying "expressly" means performing certain action such as for example clicking on a button on an interactive website and agreeing to the terms of service.

Does your specification really define "expressly" ?

Or does it give a list of actions that are included in "expressly granting"? And if so, does it say that other actions might also be included in "expressly granting." Or does it give a list of actions that might be included in "expressly granting" ?

True definitions aren't very common, or at least not in electrical / computer / software patents.

In the prior art the specification says that: a user, under certain circumstances, may perform [X] but doesn't mention a step of granting an expressed right to perform [X], doesn't explain how to grant a right to perform [X] and doesn't claim any of these things.

First, whether or not the prior art claims what you claim is irrelevant. What matters is what the prior art teaches. More specifically, what the prior art teaches a person of ordinary skill in the art.

In the prior art the specification says that: a user, under certain circumstances, may perform [X] ...

Don't get sidetracked by the use of "may." Most Examiners would say that this is a teaching of X being performed. While it's true that X is only performed under certain circumstances, X still happens.

So at best the "granting of right" to perform [X] is only implied, as it is unknown if "the user may perform [X]" based on implied right, expressed right, or without any right whatsoever.

Perhaps the Examiner is taking the position that X happens, which necessarily implies that X was allowed to happen (otherwise X wouldn't have happened). Further, since X was allowed to happen, this necessarily implies that some actor/entity granted the right to X.

And even if we assumed that is it implied that an "expressed grant of right" takes place, this does not constitute an enablement but merely a possibility that someone skilled in the art could come up with such a step.

What do you mean by "enablement" ? Are you saying that a person of ordinary skill in the art, upon reading a teaching of "expressly granting the right to do X" would not know how to make software that expressly grants the right?

If that's what you're saying, I think you're going to lose. Software has relatively low enablement threshold. IOW, software developers are used to reading a brief description and then going off and writing code to carry that out. 

You may have a better chance of winning by arguing that the prior art doesn't teach (to a person of ordinary skill in the art) "expressly granting the right" in the first place.

 18 
 on: Yesterday at 12:01 pm 
Started by novobarro - Last post by still_learnin
"112b rejection for the term"outermost layers." for lacking antecedent basis"

While verifying exactly what the examiner wants is a good idea, if I received this rejection I would simply take it at face value as an antecedent rejection as stated,

I agree on both points. If you want more info or direction, call the Examiner, but "lacking antecedent basis" is clear to me.

introduce outermost layers, then change the second recitation of outermost layers (the one present in your claim as rejected) to the outermost layers.

"Introduce" meaning use an indefinite article the first time the term appears: "an outermost layer."

ok, there aren't multiple layers defined, and in we are only claiming one of the layers.  I'm thinking amending to just "outer layer" will be ok because it doesn't imply more than one layer.

Correct: "an" allows for more than one (i.e. presence of a second doesn't avoid infringement) but does not require more than one.

 19 
 on: Yesterday at 10:59 am 
Started by fortiz303 - Last post by still_learnin
Hello all!

I have a product that (I thought) was new to the market. It's been less than a year since I disclosed it to the public, and the product has sold EXTREMELY well with no competitors- BUT the problem is that the one year window to file the patent will close soon (another 3 more months) and I want to make the move now before it's too late.

The invention was discovered in the 70's although the inventor never placed the product on the market.

If the invention was known to the public in the 1970's, then it's too late to obtain a patent on the invention.

Also, it's not clear that you invented anything, and if that's the case then you can't apply for a patent regardless of the timing.

 20 
 on: Yesterday at 06:58 am 
Started by fortiz303 - Last post by memekit
I'm a pro se applicant but...from what I've heard...
If it was invented in the 1970s, that's prior art, and you cannot claim it as novel/useful/enabled...the novel part will fail.
Even if it's a version of the 1970s form you'd have to overcome inherency.

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