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 91 
 on: 02-16-17 at 02:46 pm 
Started by mersenne - Last post by mersenne
Thanks, especially for the pointer to the Patently-O article.  That looks like it'll get me looking in the right place, which is always the hardest part (finding the first thread to start unraveling the knot!)

 92 
 on: 02-16-17 at 02:24 pm 
Started by mersenne - Last post by Tobmapsatonmi
Here's a brief survey on Dennis Crouch's website (written by Brent Dougal and Phillip Nelson of Knobbe, Martens) which may give you some insight or at jumping-off point for additional searching.

http://patentlyo.com/patent/2014/10/considerations-international-inventions.html

 93 
 on: 02-16-17 at 02:07 pm 
Started by mersenne - Last post by Tobmapsatonmi
Most of the corporate assignees that I pay attention to file the US app in the name of the corporation.  Amusingly, a couple of them haven't paid attention to the bibliographic header of their reply forms, which still conflictingly states "Applicant: Doe, John, et al.". 

Others have paid attention, and the header has been changed to recite "Inventors:___" or "First Named Inventor: ___", and then later in the sig block they say something like, "Johnny Prosecutor, Agent for Applicant BigCorp ABC".

I don't think this answers part of your question, though - the part about having problems with local patent offices (and/or local patent laws).  If your non-US inventor is a citizen of a country requiring the equivalent of a US foreign filing license before patent filing outside of that citizen's country, then filing in the name of the corp may not save you from that requirement. 

I think you need to zero in on the laws of the country/countries in question to know for sure.  Especially where there's mixed inventorship, you may need to get into the nitty gritty to figure out if that country thinks it is a domestic invention of their country, and if so, what you need to do to first-file outside that country.

 94 
 on: 02-16-17 at 02:05 pm 
Started by johnx1222 - Last post by lazyexaminer
During pendency generally means before the patent issues. In regular apps that I've worked on lately that generally occurs within a month of you paying the issue fee, but I don't know if designs differ.

37 CFR 1.55(g)(1) says:

Quote
The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b)  or PCT Rule 17  must, in any event, be filed within the pendency of the application, unless filed with a petition under paragraph (e) or (f) of this section, or with a petition accompanied by the fee set forth in § 1.17(g) which includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application in a design application. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255  and § 1.323.

So...(1) if filed before you pay the issue fee, the priority claim will be fine and it will be printed on the patent. (2) If filed after the issue fee but before issuance, the priority claim will be fine but it won't be listed on the patent and you'd need a certificate of correction to list it. (3) If filed after issuance you will need a grantable petition showing cause to have a valid priority claim...you don't want to open that can of worms if possible.

 95 
 on: 02-16-17 at 01:51 pm 
Started by johnx1222 - Last post by johnx1222
That is my understanding that the Rule 1.55 does not apply to design application.  Now, I understand that it states that a certified copy of the priority document must be submitted during the pendency of the design application, but does that mean mean before a Notice of Allowance, or can I file the priority document after receiving the Notice of Allowance but before paying the issue fee?

 96 
 on: 02-16-17 at 01:42 pm 
Started by johnx1222 - Last post by lazyexaminer
My understanding is that the certified copy only has to be filed during pendency, as 37 CFR 1.55(f) explicitly says it does not apply to design apps and there is no other requirement anywhere that I am aware of other than 1.55(g).

This is confirmed-ish by form paragraph 15.02, found in MPEP 1510.04, which says:

Quote
Acknowledgment is made of applicant’s claim for foreign priority based on an application filed in [1] on [2]. It is noted, however, that applicant has not filed a certified copy of the [3] application as required by 37 CFR 1.55. In the case of a design application, the certified copy must be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(g) together with the fee set forth in 37 CFR 1.17(g), that includes a showing of good and sufficient cause for the delay in filing the certified copy of the foreign application. If the certified copy of the foreign application is filed after the date the issue fee is paid, the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323.

Note I don't work on designs so don't take as gospel.

I hope you only used a 6 month grace period rather than a year. See 35 USC 172.

 97 
 on: 02-16-17 at 12:33 pm 
Started by johnx1222 - Last post by johnx1222
Hi:

I have a design application that was filed in 2016 with the USPTO.  The application was filed with an ADS, which provided information for the foreign priority claim.  I was wondering if there is a deadline to file a certified copy of the priority document with the USPTO. 

I understand that for utility application with foreign priority claims, the certified copy of the priority document must be submitted within the later of 16-months for the foreign priority date and 4-months from the US filing date.  Does this apply to design applications?  If not, what is the deadline to file the certified copy in design applications?

I tried to look this up in the MPEP and can find no indication of a deadline for design application, so any MPEP citation would be appreciated.

-John 

 98 
 on: 02-16-17 at 12:26 pm 
Started by BobRoberts - Last post by BobRoberts
Generating a new claim in response to an office action, and art cited, to distinguish from the art...
Let's say that the applicant is the first inventor of the hoe that has reversible use (i.e., the flat edge for slicing ground, and the opposite bifurcated pointed prongs for breaking tough soil.

Let's say I draft a patent claim to the apparatus:
A tool for cultivating earth, comprising:
a handle; and
a substantially planar cultivator coupled with the handle, including
     a flat edge at one end of the planar cultivator, and
     two bifurcated prongs at an opposite end of the planar cultivator.

Putting aside poor claim drafting, obviousness issues, and selection of terminology, are there advantages to discussing/adding information in the claim about the two orientations the tool can take?
i.e., adding
where,
in a first orientation, the flat edge is capable of slicing into soft ground, and
in a second configuration, the two bifurcated prongs are capable of breaking hard ground.

Examiner cited a flat-edged hoe.  There are reasonable arguments in the disclosure that the flat edged how cannot be modified to include the second end with bifurcated prongs (let's say, the disclosure teaches that the back end of the cited hoe includes a foot portion allowing the user to step on the hoe to break ground).  Getting away from whether it really sufficiently teaches away, in this example, I will be arguing that the applicant's hoe has two configurations/orientations and that it is improper to modify the hoe to include a second as inoperable for a foot portion, or that the art teaches away from modification... 

Should I just leave the structure in the claim without specific mention of orientations, and in the Remarks describe the two configurations provided by the structure, or should I include the "where" clause describing the two configurations/orientations?
Are there advantages to including (or leaving out) the configuration language and just relying on the specific claim structure?  Personally, I prefer "cleaner" shorter claims, but have worked with partners that include language where it doesn't significantly limit the claim, to include it as it "looks" more patentable (longer, so looks to be more limiting so perhaps the examiner more likely to not fight it)...

If including configuration information, is there a better way than above of including configurations/orientations in an apparatus claim?   Would you use 'configuration', or 'orientation', or does it really matter?   Note the multiple configurations are supported by the written description.

Thanks for any thoughts! 

 99 
 on: 02-16-17 at 09:47 am 
Started by stickyagent1 - Last post by stickyagent1
Hi
I have 2 inventions of a mechanical nature and am now at the prototype stage.
I am certain there is no products like mine available on the market at present but that’s not to say there is no filed applications in the process so I understand some formal searches will need to be conducted asap before approaching investors ect.

I am confident i have described the core elements of my inventions and the functioning mechanisms and what they perform in relation to ‘my provisional claims’ in sufficient detail, although I do not wish to establish the final claims in my application.
I have essentially described everything I can in regards to the stage I’m at, further descriptions can only be based upon the next stage but after I have some form of protection i.e ‘patent pending’

My process in thought is essentially file all 1st  or provisional patent applications both in the us and uk myself, then launch a small marketing campaign to hopefully gather some interest, then to collaborate with those necessary to grow the product in far as aesthetic design and also confirm the specification of such mechanical parts such as battery voltage, motor rpm and torque ect.Then within the required time frames and upon final development to file the final patent applications using a patent attorney to file with claims, which obviously could have varied throughout the finishing development stages.

I would be most grateful on any feedback/advice/tips on my thought process and also any pointers of things to be aware of filing a us provisional application online from the uk.

Many Thanks
Ricky

 100 
 on: 02-16-17 at 05:10 am 
Started by mersenne - Last post by bartmans
Since the AIA came into force we always file the uS application of our (European) clients in the name of the applicant/assignee.
I would not see any problems in doing that.

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