Bottom line: Patent applications directed to software inventions should be written to disclose the result and the effect of the software, but more importantly, the mechanism of the result or effect of the software. Doing so may increase the odds that the software invention will be considered to be eligible for patent protection. Nevertheless, inventors should be aware that … [Read more...]
After filing a patent application
After filing a patent application, the invention is now patent pending which marks the point at which it is safe to start marketing the invention. The process of patent protecting the invention has now formally started. Browse related articles below.
How to disqualify non-analogous references cited in an office action
In an Office Action, the Examiner may cite to one or more patent references or other documents collectively known as the cited prior art. This is the body of prior art references that the Examiner is utilizing to say that the invention is not novel or is obvious in light of the cited prior art. Oftentimes, the cited prior art may contain one or more references which the … [Read more...]
Best vehicle for broadening patent protection
Bottom line: Filing a continuing patent application is the best vehicle for broadening patent protection (i.e., patent’s claim), not reissue patent applications. In a broadening reissue patent application, the patent's claims cannot be amended or broadened so as to exclude the primary invention described in the patent application under the ‘original patent’ requirement. In … [Read more...]
Extend patent protection and receive more royalties
Bottom line: By filing a string of continuing patent applications and not claiming priority for the continuing patent applications back to a common parent application, the patent owner may be able to extend patent protection for its product. Under U.S. patent laws, an inventor can file a series of successive child patent applications. This is commonly referred to as … [Read more...]
Restriction requirement and potential responses to them
A restriction requirement is an assertion by the examiner that the claims of a patent application are directed to two or more independent and distinct inventions. See MPEP Section 803 for more information. A common restriction requirement is between claims for an apparatus and those claiming a method of using the apparatus. The examiner will suggest a group of claims that … [Read more...]
KSR distinguished making it harder to reject a claim
The KSR decision could have been construed very broadly so as to make all inventions obvious. In the opinion, the Supreme Court held that rigid rules cannot override common sense when determining obviousness. In its broadest terms, the examiner could merely state that a modification was obvious based on common sense, and thus deem the claimed invention unpatentable. In … [Read more...]
Procuring multiple patents (guns) is good patent strategy
In Institut Pasteur v. Focarino (Fed. Cir. Dec. 30, 2013), the Federal Circuit dealt with three different patents all related to one parent patent application in three different ways. One of the patents did not survive but the other two did. For patent owners, a good patent strategy is to have a multiplicity of patents in the event that not all of the patents or claims of the … [Read more...]
Earlier priority date given with passing reference in patent application
For important or keystone inventions, the initial patent application may expand to a number of further continuing applications (i.e., continuation, divisional, and continuation-in-part applications) which all relate back to the base parent patent application. For example, the entrepreneur or company may develop additional features and aspects related to the base invention over … [Read more...]