Posts Tagged: "priority"

Effective December 1, 2018, electronic retrieval of priority documents between the United States Patent and Trademark Office (USPTO) and the Korean Intellectual Property Office (KIPO) will be managed via the World Intellectual Property Organization (WIPO) Digital Access Service (DAS), in accordance with the WIPO DAS agreement established on April 20, 2009. The certified copy requirement is considered satisfied when a foreign priority document is retrieved electronically via the WIPO DAS service during pendency of the U.S. application. There is no fee for this service and participation for a particular application is voluntary.

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.

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. 

The issue was whether the PCT, which disclosed a “connection to fibre optics bundle which provides for lighting” was a sufficient written description to support the “light guide” “permanently affixed” in the “first channel” of the patented claims. The Board reversed the Examiner and concluded that the earlier application had sufficient written description to qualify as a priority document… The Federal Circuit affirmed. The disclosure of a species, here a “fibre optics bundle,” was sufficient support for a priority claim by a later-filed patent application utilizing genus claims, here a “light guide,” because the patent-in-suit was in a predictable art field and the genus claims covered well-known limitations.

While the recent decision did uphold the PTAB’s finding of validity of some claims, the Federal Circuit reversed and remanded part of the decision in a way that further highlights the revolving door of validity challenges taking place between the Federal Circuit and the PTAB… The recent Federal Circuit decision on Nintendo’s appeal of the ‘796 final written decision issued by the PTAB found that substantial evidence supports the PTAB’s determination that the challenged claims of the ‘796 patent were adequately supported by the written description of the grandparent application. However, the Federal Circuit reversed and remanded because the panel did not believe all of the challenged claims were reduced to practice as the result of the 1998 working prototype. The existence of a reduction to practice associated with the 1998 working prototype is important because if all of the claims has been reduced to practice with the 1998 working prototype Yasushi would not be prior art.

Estimates for renewing the trademark for one term (including the attorney costs) in the U.S. and the other seven Convention countries vary from $320 in Thailand to $2,120 in the U.S., while the same amounts to $4,556 under the Madrid Protocol (Figure 5). The estimates are inclusive of the costs for filing combined affidavits under Section 8 (affidavit of use) and Section 15 (incontestability) in the U.S., in addition to the costs for filing an “Affidavit of Continued Use” under Section 9 in the U.S. The individual country renewal fees under the Madrid Protocol vary from $80 in India to $925 in the EU (Figure 6).

If serial provisional patent applications seems like a good strategy for Wal-Mart, which is one of the largest corporations in the world, and if serial provisional patent applications is recommended by the likes of Gaudry and Franklin at a well respect law firm like Kilpatrick Townsend, why wouldn’t serial provisional patent applications be an appropriate strategy for inventors, small businesses and start-ups working with a shoestring budget?