CLS Bank v Alice (en banc Fed Cir. 2013). This case was supposed to provide greater certainty as to what is eligible and what is not eligible for software patents. Start ups which are the engine of the U.S. economy typically does not have money to spend on intellectual property rights that are speculative and [...]
Over the past two years since enactment of the America Invents Act, the USPTO has generally been raising filing fees. They wanted the fees to be more in line with the actual costs for the particular services. Fee increases seem odd in that the Patent Office is a profitable organization within the U.S. government which [...]
In an effort of full disclosure, I am a patent attorney. There are two significant deficiencies in working with a patent agent. No attorney client privilege. Patent agents cannot give and do not have any experience in advising clients with other areas of intellectual property law. Attorney client privilege During my consultations with clients, one [...]
What should you do? You have a provisional patent application which was filed pre-AIA (i.e., before March 16, 2013). You want to file a non provisional patent application with additional subject matter and claim priority to the provisional patent application while still maintaining first to invent status of the subject matter you filed in your [...]
Gray market goods represent about a $40 billion dollar industry for information technology products alone. When combined with other types of products, the total industry dollar figure attributable to the gray market could go significantly up. The gray market includes only genuine products that flow out of the owner’s intended geographical region of distribution. The [...]
Under the America Invents Act (“AIA”), the first-to-file a patent application on an invention is awarded the patent. Under a true first-to-file system like in Europe, the rules require that there be no public disclosure until after the patent application is filed. This is known as absolute novelty. The AIA brings the United States closer [...]
History of Prioritized Examination The United States and Patent Trademark Office (USPTO) has for a couple of years proposed a pay-to-play type of patent examination called Prioritized Examination. The normal course of a patent application is that after filing with the Patent Office, the patent application will sit in queue for examination for about 2 [...]
On March 16, 2013, the United States will transition from a first to invent system to a first to file system under the America Invents Act (“AIA”). In my opinion, it is more advantageous to have a patent application governed by the first to invent system than the first to file system even though the first to invent system for the most part behaves like a first to file system. What I mean is …
Expedited examination is available to applicants to reduce average prosecution pendency at the Patent Office. They are used to cut to the front of the line instead of waiting on a first come-first served basis, reduce misunderstanding that might cause the examiner to reject the application, and speed up examination. The purpose is to give preference to those patent application which either the Government or the applicant deems important to cut to the front of the line.
With the growth of legal process outsourcing, a small minority of applicants, law firms and others attempted to outsource the preparation of a patent application abroad for filing in the United States. However, on July 23, 2008, the USPTO published a notice in the Federal Register that informed the inventing community that a foreign filing license from the USPTO is not an authorization to export subject matter out of the United States for the purposes of patent preparation services. Essentially, they put a stop to LPOs for patent work. Nonetheless, LPOs list patent work including patent preparation and patent searching services on their websites which may be a violation of foreign filing license and EAR requirements.