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 on: 05-15-17 at 06:33 am 
Started by sailor_kk - Last post by sailor_kk
Sorry if this question had been asked.

I'd like to send some pdf slides to the examiner to support my point. Is it appropriate to upload them as IDS?

The slides are public available on the Internet but are from a competing company. Is there copyright issue? Does the competing company have right to refuse me using their material for my patent prosecution?


 on: 05-15-17 at 06:18 am 
Started by Kretivkwest - Last post by Raza-Associates
If that firm is registered in US, Then you should go for a slight change in name of your firm, also check that the registration of that company is in which class, if those classes are relevant to your products then you should change your name.

 on: 05-15-17 at 04:08 am 
Started by MR - Last post by bartmans
Hi MR,
claim categories are not defined under the EPC and the four categories that are listed in Rule 43(2) EPC are - to my opinion - just indications of these categories (when is a product not a product but an apparatus? Is a tennis racket a product or an apparatus for hitting balls? What is the difference between a device and an apparatus or a product? How about a claim to a system?).
This thus also means that European Examiners have a high degree of autonomy in deciding whether or not this criterion is met.
There are not many decisions in the case law that refer to these problems (proabably because applicants when facing a rejection on this ground easily can amend the claims). However, maybe in order to shed some light on the reasoning of the Boards of Appeal in these cases, the next quote is from a recent case (T 0510/12):
According to the provisions of Rule 43(2) EPC, a European patent application may contain more than one independent claim in the same category if such claims relate to alternative solutions to a particular problem where it is inappropriate to cover these alternatives by a single claim (Rule 43(2)(c) EPC). Claims 1 and 6 evidently relate to different, albeit closely related, embodiments of the invention both of which address the same underlying problem, viz. how to distinguish between a user’s input signal and a noise signal, and provide solutions based on the common principle of examining the distribution of the output signal components over a selected group of contiguous sensing areas. The board takes the view that, in the present case, there is no compelling reason to require the appellant to cover these alternative embodiments by a single independent method claim.

 on: 05-15-17 at 03:48 am 
Started by Patentstudent - Last post by bartmans
You should also Always include the commercial products that would harbour the invention. If your invention was on an improvement for a flashlight, then you should certainly claim the flashlight. If it was for a headlight of a car, you should, next to claiming the headlight, also claim a car comprising such a headlight.

Further, be aware that the commercial value may not lie in the product itself, but in the sales of utensils or spare parts for the device. Such as coffee cups for a coffee machine or new brushes for an electric toothbrush. If possible, also try to claim these, if not in a device claim, then in a method claim: method of pouring coffee comprising a step of putting a coffee cup in the new machine.

 on: 05-15-17 at 02:17 am 
Started by tati - Last post by tati
Thank you both for your replies.

Claims to chemical substances are very simple, claiming "a compound of formula X (formula X drawn in the claim)" and where necessary, explaining the variables of the formula, if any.

The thing is, you can rarely produce a chemical compound with 100% purity, mostly you get around 99.0-99.9, so the rest of it is some impurities leftover from the manufacturing process at percentages like 0.1 or 0.2. So if a chemical compound Z I am selling contains compound X (protected by patent) at an amount like 0.1% does this constitute infringement?

My intuition tells me no, because it is not reasonable to claim economic damage from a product (chemical compound Z) which is sold as such and happens to contain a small (yet detectable) amount of compound X. Moreover, compound Z with as little as 0.1% of X is a totally different product than compound X itself.

It is an issue which should have appeared in all major jurisdictions, but so far I have only found relevant case law in Japan (the short answer is, no, there is no infringement).

 on: 05-14-17 at 10:53 pm 
Started by MR - Last post by MR
Thanks for the answer.  Your answer implies that to be categorized as an apparatus, the thing claimed must be a machine used for manufacturing. Is this definition in the EPC Guidelines for Examination?  I don't see it in 3.1. 

3.1 includes "apparatus" as an example of a product (but doesn't define "apparatus").  How are claims that fall into both categories (product and apparatus) categorized for purposes of 3.2?

What is the difference between a process claim and a use claim?  Are use claims a subcategory of process claims, that identify a product and recite a method of using that product?

 on: 05-14-17 at 12:47 pm 
Started by MR - Last post by Euro-Pat-Att
Well, you refer to 'EPC 3.2' yourself. I presume you mean Guidelines for Examination F-IV, 3.2. Have a look at the previous paragraph, 3.1. I would place the link, but I am not allowed.

Basically your are normally allowed 1 independent claim to a physical entity, and 1 independent claim to an actvity. That's it. There's a few exceptions that you can find in chapter 3.2.

In your case, you have a fair chance that it will be allowed, but only if the apparatus is particularly suitable for manufacturing the product, so I would just try. Do however put your most important claim first, so that at least that one is searched.

A related question is: Why would you want to do this? Is your customer going to sell both the apparatus as well as the product made using it? Not impossible, but rather unlikely.

And if, as seems to be the underlying assumption, both the apparatus and the resulting product are novel, you have to be more careful than usual to explain the manufacturing method and apparatus, otherwise you might fail on A83 EPC: the requirement to disclose the invention sufficiently to allow a skilled person to execute it.

 on: 05-13-17 at 07:49 am 
Started by wayne - Last post by smgsmc
Yes, appendices as well.  Part of a successful strategy is knowing where to search to most quickly zero in on the info needed.  Don't blindly wade through the MPEP in its entirety.  Look carefully at the phrasing of the question.   E.g.,  if it refers to specifics of 102, go directly to L;  if it refers to specifics of drawing requirements, go directly to R; if it refers to who signs papers when an inventor dies, go to the main MPEP (and you should know in advance which chapter). 

 on: 05-12-17 at 08:21 pm 
Started by MR - Last post by MR
In Europe we're only allowed to file one independent claim in each category (EPC 3.2).  The categories are products, process, apparatus or use. Does anyone know where or how these are defined? Can I file two system claims, for example, by reciting, in the respective preambles, "A product comprising" and "An apparatus comprising"?

 on: 05-12-17 at 04:38 pm 
Started by bluerogue - Last post by smgsmc
A patent attorney who hasn't been around here for precisely one year used to complain about this one a lot.  The thinking being, the PTO is charging extra for those claims, so the extra cost should translate into extra time for the examiners to properly examine those extra claims. 

To do otherwise is just bad policy, and also misleading.  What else are you paying all those excess claims fees for - publication of an extra 2-3 pages?

I had one once that had about $21,000 in excess claim fees. I remember that because the Office actually forgot to charge it for some reason until I pointed it out. I don't remember exactly when that was, how many weeks or months of my salary that would have paid for...but guess how much extra time I got  ::)

I'm sure most examiners have a similar story (except for, hopefully, them forgetting to charge the fees)

In my experience, the way Examiners typically handle an app with a lot of claims is to simply punt, i.e., issue a restriction requirement (I especially hate the screwy restriction requirements based on figures), which are tricky to fight (and many firms by policy don't).  I always thought this is a grossly unjust practice:  a client pays for excess claims fees, gets a restriction requirement, but doesn't get a refund of the excess claims fees for the claims restricted out, not elected, and not examined.

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