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 31 
 on: 05-21-18 at 05:55 pm 
Started by novobarro - Last post by novobarro
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.

 32 
 on: 05-21-18 at 05:53 pm 
Started by ralphael - Last post by ralphael
Not trying to come along as not wanting to be cheated, if anything I'm really trying to not come along as an idiot who doesn't know what he needs when he will contact a patent agent. That's all.

Okay, probably the final question before I'll get on with it.
Does the agent only prepare the patent application or can he/she file for a grant on my behalf? I assume for the latter if that is the case we will need a signed agreement which may be problematic if I'm not from US (send the agreement to the agent via Fedex?)


 33 
 on: 05-21-18 at 05:17 pm 
Started by ralphael - Last post by Euro-Pat-Att
From your posts you seem obsessed with not being cheated. This is fine and understandable, but if you select a respectable patent practioner the chances of this happening are very small.

Find one that you trust, and then stick with his/her advice. Patent practitioners are not out to screw you.

Personally, I don't particularly care how the client explains his invention to me. I prefer a face to face meeting in which I can probe the client (which is not implied criticism of the invention, just a way of better understanding the essence), but a written disclosure and/or a phone call will do if needed.

Trust your patent practitioner: They know what they are doing. Spend time discussing with them upfront, that is time well spent. And answer their questions, however irrelevant they may appear to you. If you have to send 5 or 6 versions of a draft patent application back and forth, there is something wrong, most likely: you are stubborn and/or you didn't explain your invention sufficiently to begin with.

And as for drawings: Only 5-10% of the total cost will go to drawings. Don't stress about them. I prefer to work with a few selected experienced draftspersons, who will get it 99% right the first time round, with minimal instructions. I have also had clients prepare drawings, but in reality, whatever is saved by not employing an additional draftsperson, is lost again in time spent (my time) giving instructions to a well intentioned but non-experienced draftsperson. What will help is drawings in some generally recognized vector format like .dxf, so that my preferred draftspersons can start from that, instead of start from 0, but this is certainly not necessary.

 34 
 on: 05-21-18 at 04:55 pm 
Started by novobarro - Last post by novobarro
When using this form, if the US app is already filed, do we need to check the second box for "United States application or PCT international application number" and fill in the info?  Or do we check the box for "The attached application."  Also, a $160 fee is required for late filing correct?

 35 
 on: 05-21-18 at 02:32 pm 
Started by ralphael - Last post by ralphael
It's an optomechanical devices displaying what another optomechanical device can but using a different technique and is lighter, smaller and cheaper. Although, in the future, the components of the prior art may become the same size, weight and cost.

 36 
 on: 05-21-18 at 01:48 pm 
Started by ralphael - Last post by Robert K S
Can you please tell me if by attorneys you are also referring to agents?

I apologize.  I should have used the broader term "patent practitioners," which encompasses both patent attorneys and patent agents.  As you may be aware, the only difference between a patent attorney and a patent agent is that the patent attorney has also passed a state bar exam and been sworn in to the bar of at least one state, which is not a credential necessary to perform competent representation before the USPTO.  (And when I say "state", I also include non-state jurisdictions like Washington, D.C., or Puerto Rico.)

And this may be a silly question but I am new to this, do the practicioners make drawings themselves if not provided by the inventor? I assumed this was a job for someone else.

Some do, sometimes.  Other times, work is farmed out to a professional draftsperson.  It depends on the economics, the abilities of the practitioner, and other factors.

But if I disagree with the practicioner whether a part in the claim or history section should be omitted not from emotional or pride related reasons but objectively believing it is needed and I can provide my reasoning, should I present my concerns to him/her

You should present your concerns to the practitioner.  The practitioner may counsel against any particular course of action you might want to take, but ultimately, you are the boss, and have control over what the practitioner does.  From the practitioner's perspective, the practitioner cannot prevent the applicant from screwing up the application, but the practitioner may want to make sure the source of contentious decisions is well-documented (e.g., by e-mail or letter) so that fault for an inadvisable decision is clear and the practitioner cannot later be accused of malpractice.

I take from this should risk providing too much, possibly unnecessary info to the practicioner as to not risk providing not enough, rather than trying not to burden the practicioner with very long paragraphs at the risk of omitting some details, right?

Yes, err on the side of overdisclosure, but as I said before, the practitioner may suggest culling or re-arranging certain material so as to avoid making unnecessary and potentially damaging admissions about the state of the prior art.  The thing about admission-statements is they are binding even if they are not objectively true.  So if the patent applicant makes an errant statement about the prior art that the applicant later regrets, there are no takesy-backsies.

 37 
 on: 05-21-18 at 01:32 pm 
Started by ralphael - Last post by Robert K S
I think I am sure on this but just to be clear, the invention does not have to improve upon prior art, just achieving the same result differently should be sufficient, yes?

It depends.  If the invention is something that can be categorized as an "abstract idea" or other judicial exception to the statutory subject-matter eligibility provision--and you might be surprised what types of inventions the Patent Office and the courts have been able to so categorize, particularly if the invention in any way involves the use of a computer--it may be practically impossible to overcome a subject-matter eligibility rejection unless it can be shown that the invention presents a substantial improvement over the prior state of the technology field.  This is a complicated area of the law, so if you think your invention is at risk of being accused of being "directed to" an abstract idea, law of nature, or natural phenomenon, and especially if the only difference between the invention and the prior art is a new algorithm or mathematical process that could, given enough time, be performed mentally, you will want to consult a practitioner who has dealt with this kind of rejection.

 38 
 on: 05-21-18 at 12:11 pm 
Started by novobarro - Last post by mersenne
Is the Examiner trying to say that outermost implies that we should have previously introduced several layers because outermost implies that it  is the layer that is furthest from the center?

It sounds like it...if your previous structure didn't specifically introduce some of the layers and indicate that they're stacked on top of each other (or whatever your arrangement is), then I think you have a problem.  The minimal amendment would be to say "...an outermost layer..." but that doesn't help much unless the rest of the claim makes clear that other elements are somehow stacked into layers.

Note that this sort of structure is often tricky to claim, if it's possible to change the layer stacking order, or to have extra layers interleaved between the ones that you talk about in the claim.

 39 
 on: 05-21-18 at 12:10 pm 
Started by novobarro - Last post by lazyexaminer
Not to be unhelpful, but this type of thing you really need to talk to the examiner cause only they know what they meant. Or you could simply traverse the rejection and hopefully they will provide more explanation.

But yeah, maybe it is not clear that the claim requires multiple layers so it is not clear what "outermost" is in relation to? Or maybe it is ok because clearly there must be a number of layers in this type of thing. I can see it being perfectly fine or a problem depending on the facts, but again I have no idea what the examiner was trying to say.


 40 
 on: 05-21-18 at 11:07 am 
Started by novobarro - Last post by novobarro
I received a 112b rejection for the term"outermost layers." for lacking antecedent basis.  This is the first time this term was used and it is simply presented as "outermost layers" without the article "the."  Is the Examiner trying to say that outermost implies that we should have previously introduced several layers because outermost implies that it  is the layer that is furthest from the center?

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