Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  


We are looking for moderators.  Message the admin if interested.

Pages: 1 2 3 [4] 5 6 7 8 9 10
 on: 01-15-17 at 02:16 pm 
Started by Vznr - Last post by smgsmc
mersenne, suppose the only disclosure on the original is USPTO's publication (and a later publication by WIPO on the PCT). Now a PPA is filed before the 1 year deadline on the USPTO publication. What are the odds USPTO can successfully assert their publication is prior art when the PPA becomes a utility application? Am I correct that the UA gets 1+1=2 years from the publication date in the above case?
I think you're creating some confusion by referring to a "1 year deadline on the USPTO publication".  I assume that you're referring to the 102(b)(1) exception for disclosures made within a year of the effective filing date.  But let's back up a little bit.  Since this is post-AIA, there are two ways that a published application can serve as prior art: 102(a)(1), and 102(a)(2).  If you file your new application after the original application publishes, then the published original application will be prior art under 102(a)(1).  If you file your new application before that original application publishes, then the published original application MAY be prior art under 102(a)(2).  I say MAY, because if it does not name another inventor, then it won't be valid prior art.

Now, note that the exceptions under 102(b) ONLY apply to 102(a)(1) prior art.  I don't think that a court would accept the argument that the publication by the USPTO falls within the scope of " another [the USPTO] who obtained the subject matter disclosed directly or indirectly from the inventor", and I would not want to be the first one to make that argument. 

My suggestion to you is to make sure that 102(a)(1) will not apply, and that is done by filing the new application prior to publication of the original application.  You can do this with a priority claim to the prior application, or without.  In either case the prior application will not be prior art to the new.

<<Emphasis added>>

I'd like others to chime in on this topic.  Under the OP's hypo,

(a) The earliest public disclosure is the publication of the first patent application.

(b) Less than one year has passed since the the publication date of the first patent application.

Then, according to AIA 102:

35 U.S.C. 102 Conditions for patentability; novelty.

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
(1) the claimed invention was patented, described in a
printed publication, or in public use, on sale, or otherwise
available to the public before the effective filing date of the
claimed invention; or



CLAIMED INVENTION.—A disclosure made 1 year or less
before the effective filing date of a claimed invention shall not
be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or
joint inventor or by another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint
inventor; or


So it would appear that the 1-yr grace period covered under 102(b)(1) would be applicable if a second application were to be filed.  I don't interpret the statute to read that the USPTO disclosed the material because it was responsible for publishing the application.  The inventor(s) disclosed the material because they submitted the application to the USPTO and did not request non-publication.  Similarly, if the inventor(s) publish an article in an IEEE journal, it is not the IEEE that discloses the material because it publishes the journal; it is the inventor(s) who disclose the material because they submitted the article for publication.  In which case there is a 1-yr grace period from the date of publication of the IEEE journal article.

 on: 01-15-17 at 01:59 pm 
Started by Patrickk - Last post by Patrickk

I have a question. Can i legally use the word "Darth" in a title for example of a book or any other art work. And i dont mean the name "Darth Vader" or any other Darth xxx from the Star Wars saga. Just the word "Darth" with some other name or word that doesnt have anything to do with Star Wars. And the content itself has nothing to do with Star Wars either. 

 on: 01-15-17 at 12:57 pm 
Started by majed - Last post by majed
Hallo everybody,
Suppose that I have an idea for example to add a timer and a heat sensor to a cup which has a great advantage.
So, how to protect the idea which is very easy to be made ?
The cup, sensor , and timer already exist and there are so many ways to do it.
Should I draft it as a method of making a heat-controlled cup by assembling these three things ? Like
1-fixing a sensor inside the cup
2- fixing/attaching a timer out .
3- connecting the sensor to a display unit out of the cup.
-Is that enough to prevent anybody making it. Does it need more/drawing?
-Suppose that I added some features to the timer (or control unit) like:
warn me if the liquide temperature become less than a given value.
How this feature can be protected?
should I just write it in the provisional in one line and leave the protection to the patent attorney?

 on: 01-15-17 at 10:01 am 
Started by Weng Tianxiang - Last post by Weng Tianxiang
Sorry, a typo. It should read: " because I specify the 3 most important languages in the spec."


 on: 01-15-17 at 09:56 am 
Started by Weng Tianxiang - Last post by Weng Tianxiang
I have found mistakes in my specification, but if I can limit the scope of claims then no errors would happen and applications would get allowance.

Here is the background.

This is the definition in my spec for HDL:
[0002] HDL refers to all current hardware description languages VHDL, Verilog, SystemVerilog and so on.

I thought that VHDL, Verilog, SystemVerilog and so on popular languages are the only languages that HDL refers to. After final Office action of rejections I checked Wikipedia and found RTL (register transfer level), the lowest level language, also belongs to HDL.

So the Examiner listed several patents using RTL to reject my claims.

1. The examiner does a correct action! If I use HDL in my claims I includes more than what I show and prove in the spec.

2. In my HDL definition as I show above I never list RTL as my target hardware description language.

3. In my spec I use VHDL-2002 as my implementation language to describe my invention.

4. RTL language is a totally different language from VHDL language in respect of coding method, coding complexity and coding structures. Designers usually use VHDL, Verilog, SystemVerilog and so on higher, or behavioral HDL languages to design circuits and use synthesizers to generate circuits described by RTL language. If needed, designers may also use RTL language to code a simple part of circuits. RTL language is based on register level as its name means. In a normal circuit millions of registers would be generated. My invention’s purpose is to develop a method to simplify coding the most difficult circuits in industry: wave pipelined circuits. Intel developed 8087 coprocessor in 1980, and more than 10 years later in 1997 Intel commercialized its next generation of 8087, using wave-pipelined circuits and calling its technology as MMX technology.

5. If I limit my claims’ scope using VHDL, Verilog and SystemVerilog instead of HDL, I think all references cited by the Examiner would play no roles in the rejections.

6. Here are my words: for the first use I use in VHDL, Verilog or SystemVerilog (hereinafter VHDL-like), later use in VHDL-like to replace all “in HDL”.

7. The reason I only list VHDL, Verilog or SystemVerilog, because I specify the 3 most languages in the spec.

I would like to hear your comments on if the Examiner would reject my idea.

Thank you.


 on: 01-15-17 at 08:57 am 
Started by projecttoday - Last post by projecttoday
Yes, I'm aware of that.  In this line
Is there a patent on accounting programs held by QuickBooks or Peachtree or somebody and
I should have said method instead of program. 

 on: 01-15-17 at 01:57 am 
Started by mbison - Last post by cheesepep
Seems to be the case. Invoking 112(f) is not a rejection. You can, if you want, say you disagree in your response for prosecution history, but that is about all you can do.

 on: 01-14-17 at 07:46 pm 
Started by tuka - Last post by tuka
After you helped me to finish the provisional I want to thank you but I have no money to continue alone so pls advise me,
How to find investors? Manufacturers directories?
where? Taiwan, USA, ALL?
Should I send to the CEO or whom?
What to write? I am ready to supervise the manufacturing.
What is the acceptable ratio?
Is it ok to send the text and drawings or should I explain in a meeting?
How to protect my invention? NDA enough? Should they stamp any paper from their chamber of commerce?

 on: 01-14-17 at 07:03 pm 
Started by dab2d - Last post by mybrainisfull
A door by definition is inherently movable. If you call it a door, but then say it is incapable of its inherent function (of being a door) without further qualification, you are making a contradictory statement. In other words, if there is no circumstance when it could be a door, it's not proper to call it a door. It's actually a barrier of some sort.

If you want to maintain the inherent characteristics of the door in your claim, I think you would have to find some joining language that reconciles the above contradiction I posited.


A door comprising a heat reactive seal around its periphery that renders the door permanently incapable of movement when exposed to heat. (this would be distinguishable from prior art that comprises a lock that renders the door incapable of movement when engaged)

Argue that the thing that makes your door incapable of movement is patently distinguishable from the thing that makes the prior art door incapable of movement.

Just my 2c. I'm not an attorney, but I do use doors on a daily basis.

 on: 01-14-17 at 07:03 pm 
Started by mbison - Last post by mbison
I recently received a first-action allowance that includes an indication that several of our claims were interpreted under 112(f).  The application is for a software invention, and our 3 independent claims were for a method, a system, and a CRM.  The system claims were interpreted under 112(f) apparently because we recited "a control system configured to:" and then listed several software functions.  The examiner indicated that the specification has corresponding structure for the control system that includes a processor and non-transitory CRM. 

I'm wondering what if anything we should do to respond to this.  Should I care in this case, given that a processor and CRM would seem to be a necessary part of any control system as claimed.  If we say nothing now, can we later argue that 112(f) should not be applied to this claim?   I think this client will be reluctant to make any substantive arguments on this issue, but I could perhaps file comments on the reasons for allowance just stating that we agree with the examiner that the claims are allowable and don't otherwise acquiesce in the examiner's statements.  Thoughts?

Pages: 1 2 3 [4] 5 6 7 8 9 10


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

iKnight Technologies Inc.

Page created in 0.104 seconds with 18 queries.