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 21 
 on: 06-23-17 at 05:40 pm 
Started by dab2d - Last post by Robert K S
This methodology is antithetical to the business model that relies on invention and IP protection to assure monopoly such that the costs of market development are not undercut and exploited by a later market entrant.  It's more suited to the startup that provides a product that is not likely patentable.  Here's an article by a former patent attorney who now works as a lean consultant (or something).

Yes, the time and capital spent applying for patent protection may ultimately prove to be a waste should the product not prove profitable, but there will be no viable business without patent protection should the product be profitable because copycats will be riding piggyback on your sunk costs (to mix animal metaphors).

The last sentence of the article ("Its up to us Lean Startup entrepreneurs to force [patent practitioners] to develop a new model that serves us better as we embrace this new business paradigm") is just silly.  Patent practitioners are there to advise you as to the best ways of obtaining IP protection and assisting you with that process.  It is not the job of practitioners to "develop a new model" for those that willfully ignore disclosure bars to patentability.

 22 
 on: 06-23-17 at 04:53 pm 
Started by dab2d - Last post by dab2d
Has anyone dealt with the Lean Startup method?

Long story short is that at the beginning of the process, the entity is supposed to come up with a minimum viable product (MVP) and discuss the MVP with potential customers. In these sessions, the MVP is disclosed and feedback solicited.

This raises all kinds of alarm bells in my mind. It appears that you 1) start the grace period because of the disclosure. 2) You kill your chances filing in countries with no grace period. 3) you may have inventorship issues if the customer gives you feedback that becomes part of your invention.

It is my understanding that NDAs and other agreements are not possible.

Is there a way to limit these issues? It gets down to the eternal question I guess... How much can you disclose without disclosing?

     

 23 
 on: 06-23-17 at 04:30 pm 
Started by MR - Last post by Weng Tianxiang
Hi Toot Aps Esroh,

I appreciate your comment.

In my situation I have filed 3 non-provisional patent applications claiming priority on one provisional patent application and I am the sole inventor for the above applications. After filing a terminal disclaimer for each of them, double patenting problem disappeared and I successfully got all applications allowed or issued in very short period.

If I had tried to argue all merits against double patenting, I certainly would have been in quagmire for one or more years and several more rounds of RCE.

Your comment is valuable to me that a terminal disclaimer has other limitations I don't remember.

Thank you.

Weng

 24 
 on: 06-23-17 at 03:47 pm 
Started by EDCGadgetGeek - Last post by Tobmapsatonmi
The subject of this post has always confused me.  This is my scenario.  I received 103 rejections based off 1 reference on some of my dependent claims, and I have strong arguments to over come them, but I want to cancel these dependent claims, and add them as limitations to my independent claim 1, using them to overcome the 102 rejection of my independent claim 1.  So where, do I argue this...under a 103 heading or a 102 heading in my amendment/response?


Rejection of claim 1 under 35 USC 102 over Smith, et al.
In the Office Action claim 1 was rejected under 35 USC 102 as anticipated by Smith, et al.  Currently amended claim 1 is amended to contain the subject matter of original dependent claim 3 (now canceled), which formed no part of the rejection under 35 USC 102.  Therefore the Applicant respectfully submits this rejection is moot, and respectfully requests it be withdrawn.

Rejection of claim original claim 3 under 35 USC 103 in view of Doe, et al.
In the Office Action claim 3, which originally depended from claim 1, was rejected under 35 USC 103 as obvious over the disclosure of Doe, et al.  Currently amended independent claim 1 now contains the subject matter of original dependent claim 3 (canceled herewith) and therefore the obviousness rejection over Doe, et al. is relevant to currently amended independent claim 1.  This rejection is traversed because the Applicant wants to argue the Bejesus out of this rejection.

 25 
 on: 06-23-17 at 03:03 pm 
Started by EDCGadgetGeek - Last post by EDCGadgetGeek
The subject of this post has always confused me.  This is my scenario.  I received 103 rejections based off 1 reference on some of my dependent claims, and I have strong arguments to overcome them, but I want to cancel these dependent claims, and add them as limitations to my independent claim 1, using them to overcome the 102 rejection of my independent claim 1.  So where, do I argue this...under a 103 heading or a 102 heading in my amendment/response?

 26 
 on: 06-23-17 at 01:40 pm 
Started by IPgirl - Last post by Tobmapsatonmi


Are you asking about protection in the US? I'm not familiar with the term "ID protection."


She means industrial design protection, what we'd call ornamental design protection, i.e., a design patent. 

WIPO provides for filing of IDs.  Here's some Q&A from them: http://www.wipo.int/designs/en/


To the OP:  This link will open a list of granted US design patents where the word "banner" is in the claim (some in the list will not be relevant).  As you click to open a given patent, it will open as an HTML text file, but note up near the top you can click a link to display the "Images" of the object for which the design patent was granted.

http://patft.uspto.gov/netacgi/nph-Parser?Sect1=PTO2&Sect2=HITOFF&p=1&u=%2Fnetahtml%2FPTO%2Fsearch-bool.html&r=0&f=S&l=50&TERM1=banner&FIELD1=ACLM&co1=AND&TERM2=4&FIELD2=KD&d=PTXT


[Edit to add - hadn't seen MYK's intervening comment; sorry for some redundancy]

 27 
 on: 06-23-17 at 01:38 pm 
Started by IPgirl - Last post by MYK
Are you asking about protection in the US? I'm not familiar with the term "ID protection."
"Industrial design".  Good point, that's more of a European term for what the U.S. insists on calling a "design patent".

Also, is this an actual physical thing-she's-going-to-hang-out-a-window, or is it just a "banner ad" for use on web pages?  The U.S. has allowed graphic icons to be protected via design patents, but I'm not sure about the rest of the world.

At this point I have to say it seems a little odd that someone posting as "IPgirl" would have to ask this sort of question in order to help a third party file for IP protection.  If you don't know the basics, then it seems like the proper thing to do would be to refer your friend to a practicing IP attorney, patent agent, or whatever they are called in your country.

 28 
 on: 06-23-17 at 01:19 pm 
Started by MR - Last post by Toot Aps Esroh

Filing terminal disclaimers for each of related applications is much easier and save way to avoid double patenting problem.



Weng:  You cannot file terminal disclaimer except in the case where both applications are owned by the same person or the same organization.

In the situation given, it appears the inventors have not assigned either application and are proceeding as individual co-applicants.  If MR can get all of A, X, Y, Z to agree to assign the two apps to a single entity, then terminal disclaimer will work.

Otherwise, as lazyexaminer mentions, the solution is to argue that the claims are more than obviously distinct over the reference app (or amend them to make them so).

 29 
 on: 06-23-17 at 01:12 pm 
Started by MR - Last post by Toot Aps Esroh
Is a double-patenting rejection in application A proper when the claims of application A are obvious over those of application B but the applicants are not identical (e.g., X and Y are the applicants in A and Y and Z are the applicants in B)? 

How does one address such a rejection if only representing applicant X, or applicant Y? If applicant Z won't cooperate, a terminal disclaimer could render application A worthless.


MR: You might find Courtenay's blog post on this topic informative (link and lede below).
https://www.pharmapatentsblog.com/2013/03/12/federal-circuit-finds-obviousness-type-double-patenting-without-common-ownership/

"Obviousness-type double patenting usually arises between commonly-owned patents or patent applications. While the USPTO has interpreted the judicially-created doctrine as pertaining when there is common or overlapping inventorship, without regard to common ownership, the Federal Circuit had not upheld that interpretation of the doctrine until last week, in In re Hubbell."

 30 
 on: 06-23-17 at 10:10 am 
Started by IPgirl - Last post by still_learnin
I'm guessing she wants to protect the shape and colors of the banner.

SO that means I have to use the ID protection method?

Are you asking about protection in the US? I'm not familiar with the term "ID protection."

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