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Posts Tagged: "patent applications"

The DOCX Transition: The USPTO Explains Why It’s Delaying the Fee for Non-DOCX Filings

On Friday, November 19, the USPTO announced that it will be delaying the $400 fee for patent applications filed in non-DOCX formats until January 1, 2023. Previously, the fee was set to take effect on January 1, 2022, but the Federal Register notice, officially published on Novemebr 22, indicated that the Office will undertake enhanced testing of its information technology systems as more users file in DOCX, and that it wants to give applicants more time to adjust to filing patent applications in DOCX format. The goal, according to acting USPTO Director Drew Hirshfeld, is to alleviate concerns that have been raised by users about rendering problems that could result in applicants losing their filing dates due to incorrect information being filed.

As cannabis patent filings increase, are food and beverage companies positioned to benefit?

Early protection of intellectual property rights is a critical component in any business’ efforts to secure a competitive advantage in the marketplace. A recent report has found that patenting activity for cannabis food and drink has seen a large increase in global activity, in the last five years. 242 simple patent families have been filed in 2015, up from only 144 simple patent families filed in 2012. However, not a single food and beverage company was found to be among the top 10 applicants. Is this a sign that food and beverage companies are not well positioned to benefit from ongoing cannabis legalisation?

USPTO Announces Access to Relevant Prior Art Initiative to Import Prior Art Citations into Patent Applications

The USPTO recently announced the implementation of the first phase of the Access to Relevant Prior Art (RPA) Initiative. The initiative is being designed to reduce the burden placed upon patent applicants to comply with their duty of disclosure through the use of automated tools which import relevant prior art and other pertinent information into pending U.S. patent applications as quickly as possible.

What are the Priority Date, Patent Term, and Effective Filing Date of a Patent: The Roles of Specific Reference, Incorporation by Reference, and Claim Support

A recent Federal Circuit decision demonstrates that for priority claims and patent term, the phrase “specific reference” is key. For example, amongst three related applications, to get the benefit of priority of an earlier U.S. patent application 1, application 3 in a priority claim has to have a “specific reference” to earlier application 1. A mere priority claim in application 3 to application 2, even though application 2 specifically “incorporates by reference” application 1, is not sufficient to allow application 3 to rely on the filing date of application 1. Rather, the priority chain is broken between applications 2 and 1, leaving application 3, at best, with a priority date of application 2 for purposes of patentability… From the Federal Circuit in Droplets, practitioners are reminded that both priority claims and incorporation by reference are very specific tools that should not be relied on during prosecution without careful consideration and deliberate use. Certainly, incorporation by reference does not trump “specific reference” and may lead to a break in the priority chain for purposes of patentability.

Protection Strategies for Growth-Phase Companies

When it comes to the IP rights of your competitors, what you don’t know can hurt you. As your company brings new products to the marketplace, you should consider taking steps to ensure that doing so does not infringe on the patent rights of your competitors or other companies. Understanding what is in the patent portfolios of your competitors and the IP landscape in general is key to avoiding surprises and reducing risk when commercializing products. Competitor landscape reviews may also provide valuable insight into your own patenting strategy. To this end, many companies perform so-called “freedom to operate” (FTO) studies with the goal of identifying any potential IP barriers to market entry and the associated risks of future litigation.

Patent Drafting Basics: Instruction Manual Detail is What You Seek

In some important ways a patent application should be akin to an instruction manual, but unlike the aforementioned BBQ grill, the reader of relevant skill in the area is the one that should be able to follow along. Having said this, there is an important caveat! A patent is not a blueprint… Have you ever seen a worthwhile instruction manual without good, high-quality drawings showing you what to do? Probably not. So, if you’ve been frustrated by the decreasing quality of instruction manuals when “some assembly is required”, you fundamentally already know exactly what you need to do when you draft a patent application. Lots of drawings, lots of descriptive text that focuses on the key elements of the invention — that’s what makes a great patent application.

Intellectual Property Considerations and Guidance for Start-Ups: Patents

Intellectual property probably isn’t high on the to-do list for most new nonprofits and business start-ups. There’s plenty enough to do with setting up an organization, paying bills, and serving customers and clients. However, intellectual property is important and shouldn’t be overlooked. Companies and organizations that don’t protect their IP can risk losing hard-earned work and concepts. Also, companies can risk liability if they violate the IP rights of others, even unknowingly or by accident. Patents provide inventors the right to exclude others from using the technologies covered by the patent for a limited time.  In exchange for exclusivity, inventors must disclose how to make and use the invention.  An inventor can apply for a patent with the United States Patent and Trademark Office (PTO), as well as other intellectual property offices around the world.

Webinar: Patent Prosecution Strategies for the Realities of AIA

Join Gene Quinn on Thursday, September 27, 2018, for a free webinar discussion on the important topic of streamlining the patent prosecution process and stretching a patent budget efficiently. Joining Gene will be Stuart Recher, Vice President of IP Services for Clarivate Analytics.

World Intellectual Property Indicators 2017: Design Patent Highlights

The World Intellectual Property Organization (WIPO) has published its annual World Intellectual Property Indicators. For the second consecutive year, the number of design applications filed worldwide continued to grow, with an estimated 963,100 applications filed in total globally. The 2016 growth rate was 10.4%, following 2015’s more modest growth rate of 2.3% and 2014’s 10.2% drop in applications. 90% of the growth in 2016 can be attributed to increased filings in China.

Could Have, Should Have, Would Have

It is irresponsible for adults to give children who fail to complete their work credit based on the excuse that the children could have, should have, would have completed their assignments. It is much more inequitable for the U.S Patent Office to deprive inventors of the credit they deserve (in the form of patent allowances) because some conjured up combination of disconnected individuals—who have little, if any, temporal or linguistic ability to communicate with one another—could have, should have, would have eventually produced the claimed invention.

The CRISPR Tug of War

The University of California (“UC”) and The Broad Institute, Inc. (“Broad”) are among the leaders in the development of CRISPR technology.  Both UC and Broad filed patent applications for claims broadly drawn to CRISPR-Cas9 systems and methods of DNA editing.  These parties are currently engaged in litigation over patents concerning the potentially most lucrative application of CRISPR technology – the use of CRISPR-Cas9 in plant and animal (eukaryotic) cells.  The outcome of this litigation will affect control of the CRISPR platform and development of the technology.

Creating Better Applications Through Patent Strengthening

Events along the prosecution process create multiple windows of opportunity for strengthening a portfolio. Decisions are based on indications of market adoption using evidence from specialized technical analysis and subject matter experts who examine products in the market that potentially use your teaching and proposed claims. There are four key factors to consider during the prosecution process that can identify strengthening opportunities

A Claim of priority Cannot Be Made With an Incorporation by Reference

Upon filing a patent application, the USPTO mails a filing receipt.  The domestic and foreign claim of priority is stated and should be checked to make sure that it reflects the claim of priority that the inventor intends.  Otherwise, the patent owner may not be able to cure the defect when trying to sue an infringer after it issues as a patent.  If it can be fixed after it matures into a patent, the costs are much higher than the costs to fix while the patent application is still pending. 

Are fewer continuations the sign of a healthy patent system?

Hirshfeld explained to me that he is well aware of all of the portfolio reasons why continuations are very important, but the Office does really want to minimize RCEs, which makes all the sense in the world. An RCE is not a new application, is essentially just payment for additional consideration by an examiner. RCEs, while sometimes necessary can and do become inefficient and attempts to streamline the prosecution process have long tried to make them unnecessary in whole or in part to the extent possible.

Claimed and prior art ranges must have meaningful difference for nonobviousness

Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed in this manner but other types of inventions can be defined in terms of a numerical range such as a length as well. In re: Brandt (Fed. Cir. March 27, 2018) explains that very small differences in the respective ranges can support an obviousness rejection unless the inventor shows a meaningful difference exists.