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 91 
 on: 06-14-17 at 11:25 pm 
Started by mersenne - Last post by mersenne
The "not being publicly known" phrase has been heavily litigated and has a meaning generally different from patent law.  A publication of the information by another is generally not sufficient to show that the information fails (3).

Oooh!  Do you have any cases about that?  I haven't found any, but I know I'm just searching for the wrong things.  (I assume that this _has_ been heavily litigated, and I just can't find the cases with the weaksauce service I have.)

The problem I'd like to understand is, suppose someone digs up an old patent and starts using the process.  Can they really sue someone for learning that process from them under sketchy circumstances?  If the other person actually learned the process from the same old patent, wouldn't they be OK?  How would the second person protect himself from the first person claiming the second stole the secret?  Either side could be lying, right?  It seems unworkable if you allow public information to be made secret again.

 92 
 on: 06-14-17 at 09:21 pm 
Started by CKW2008 - Last post by CKW2008

long story short I started my company back in 2011 and first use in commerce in 2012 (and i have proof).  Someone tried to steal my company in my geographical area and said it was their own idea they secretly registered the trademark last year and was just granted permission to use.  I was unregistered and now have filed my application with first use of dates in commerce. 

I clearly have prior use, and as soon as their registration number comes back, I will be filing for a petition for cancelation.   They went as far as to use my same logo, barely modified.  The person who did it has even been following my social media pages. I have a clear link to them

both parties are lawyered up.  I have a sufficient amount of evidence showing connections between my company and their "inspirations"  they even stole my logo. 


How long does it take or is it easy for the TTAB to revoke a trademark?


 93 
 on: 06-14-17 at 05:53 pm 
Started by MR - Last post by MR
2154.01(c) says

"if there is any difference in inventive entity between the prior art U.S. patent document and the application under examination or patent under reexamination, the U.S. patent document satisfies the 'names another inventor' requirement of AIA 35 U.S.C. 102(a)(2)"

This strikes me as incorrect.  If A is the inventor of application 1, and A and B are joint inventors of application 2, then there is a difference in inventive entity, but application 1 does not name another inventor.

Is anyone aware of any further relevant documentation, e.g., an explanation of how the drafters of the MPEP arrived at their interpretation?


 94 
 on: 06-14-17 at 05:15 pm 
Started by mersenne - Last post by midwestengineer
Can A properly maintain a trade-secret misappropriation suit against B, even though the information about his process is generally known to the public via the patent filing?

The key point here is trade-secret. Because the information is known to the public, person A would lose the lawsuit, because here there is no trade-secret, so there is no base for a trade-secret misappropriation!

This is absolutely wrong.  You appear to simply be using common or what you think are the proper definitions of terms rather than the meanings courts have assigned.

The elements of a trade secret are (1) information; (2) reasonable measures taken to protect the information; and (3) which derives independent economic value from not being publicly known.  The "not being publicly known" phrase has been heavily litigated and has a meaning generally different from patent law.  A publication of the information by another is generally not sufficient to show that the information fails (3).

Keep in mind that trade secret causes of action are derived from unfair competition law which looks for fairness rather than invention/expression from IP law.

 95 
 on: 06-14-17 at 04:48 pm 
Started by mersenne - Last post by Weng Tianxiang
Can A properly maintain a trade-secret misappropriation suit against B, even though the information about his process is generally known to the public via the patent filing?

The key point here is trade-secret. Because the information is known to the public, person A would lose the lawsuit, because here there is no trade-secret, so there is no base for a trade-secret misappropriation!


 96 
 on: 06-14-17 at 02:50 pm 
Started by MR - Last post by mersenne
If M+S is novel because of widget features as well as S's improvement (and M can be a co-inventor with S because of that) then wouldn't you get some kind of double-patenting rejection vs. the M/widget application?  If there was a TD in effect, the patents would be tied together, so (maybe?) Mary couldn't assert her patent against Sonia.

It sounds like something I'd try to steer clients away from.  I don't really know what would happen, but it'd probably be expensive to find out!

 97 
 on: 06-14-17 at 02:10 pm 
Started by PatentScientist - Last post by PatentScientist
Thanks for your insight smgsmc truly appreciated yes I haven't had any so to speak "quality" related issues with other counsels at client X but correspondence back and forth with this one. My ego is not shattered or anything but I would only see it as a natural course of action to have interaction with a counsel before something is submitted. Again I am not a mind-reader so I will amend the claims, draft a response, then in your email steer me in the right direction if I am totally wrong which has not even been the case. Anyhow truly appreciated.   

 98 
 on: 06-14-17 at 02:02 pm 
Started by PatentScientist - Last post by smgsmc
(a) Allowance rate per se is not necessarily a good metric of the quality of patent prosecution.  I know many practitioners who take the easy way out:  narrow the claim a lot to get allowance.  But the allowed claim might not have much value.

(b) The scenario you've described is common in my experience.  In my firm, we kept guidelines (specific do's and don'ts) not only for individual clients, but also for individual in-house counsels at each client.  All of us at the firm would collectively pool our feedback in shared files.  When you got a new app or an OA, we would check who the managing in-house counsel was first, and then lookup his guidelines.

 99 
 on: 06-14-17 at 01:18 pm 
Started by PatentScientist - Last post by PatentScientist
Ok so I have a general question and would appreciate your experience dealing with clients. I am a biotech major doing mechanical cases and prosecution for client X at a small IP boutique. Since I have started prosecuting their inventions I have gotten a good number of cases allowed. I have been at the firm a little over a year and I have been given full authority to sign off my own work. Last week or so client X has contacted my boss stating that the "quality" of work is not what it used to be. I have a pretty ok Issuance/Office Action ratio and the procedure is that I comment the OA, draft a response and have them review it. >75% of the time they agree but there is one attorney or agent or whatever he is at client X who keeps sending me emails back stating don't focus on this bla bla bla, that is not the core of the invention etc. But the approach is always you read the cited art, try to patentably distinguish over the art and argue that. I am not a mind-reader so naturally some times I can't get the stuff perfect and right the first time without any interaction with the client. I know that my boss is satisfied with my work, he pulled me in to his office and I explained my case without getting defensive but with this one guy at client X sometimes he has comments or wants to amend the claims focusing on something else or redo the draft. Is this something you have experienced ? Hard to please person at a client ? Other clients Y,Z are pretty content and not acting like this one person at client X. Any insight would be appreciated.

 100 
 on: 06-14-17 at 12:47 pm 
Started by MR - Last post by MR
Iím assuming there are only two applications Ė one claiming the widget (Mary) and one claiming the improved widget (Mary and Sonia). Presumably Sonia doesnít know about the first application when she signs the declaration.

I'm thinking the first application isn't prior art to the second because it's not the case that it "names another inventor".

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