A provisional patent application (PPA) is not a cheap option but it is a lower cost alternative to a non provisional patent application. The reason is that although the provisional patent application has lower minimum requirements than the nonprovisional patent application, the PPA has to disclose all of the details that the NPA must disclose. The provisional patent … [Read more...]
Before filing a patent application
Before filing a patent application, among other activities, you must make sure that you own the patent rights, it is eligible for patent protection and also new and non-obvious. Browse related articles below.
Patent search websites
The two online patent search resources that I utilize the most to retrieve patent documents and to research patents are freepatentsonline.com and the uspto.gov website.The uspto.gov website provides two different databases. One for issued patents and one for published patent applications. Some published patents applications mature into a patent but some do not. Hence, … [Read more...]
Written description requirement for writing a patent application
A patent application is a well-crafted document which has many different requirements for it to be effective. One of the requirements is the written description requirement. The Manual of Patent Examining Procedure states that “to satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in … [Read more...]
Enablement easier to satisfy for broader patent claims
With patents, everything starts and ends with the claims which means that the specification, the arguments presented during prosecution and all of the patent applicant’s efforts affect the language of the claims. For example, a patent specification must enable one of ordinary skill in the art to make and use the invention as recited in the claims.Alcon Research Ltd. v. … [Read more...]
Provisional Patent Application: Cheap Alternative?
A provisional utility patent application is one of the most misunderstood tools of the patent system—at least by non-patent practitioners. From the layperson’s perspective, the provisional patent application is usually viewed as a cheap patent application. However, as discussed below, the provisional patent application is not cheap compared to the cost to prepare a … [Read more...]
Plager calls to overturn current patent eligibility analysis
The holding of Interval Licensing LLC v. AOL, Inc. (Fed. Cir. 2018) is similar to Electric Power Group, LLC v. Alstom (Fed. Cir. 2016). In these cases, the courts invalidated the patent as being directed to an abstract idea for claiming an end result and not the how to achieving it. In Interval Licensing LLC, the dissent’s opinion is much more interesting.He explains … [Read more...]
Patent application must enable FULL scope of claimed invention
Boston University's patent claim invalidated for failing to enable its full scope In Boston University v. Everlight Electronics (Fed. Cir. 2018), the Federal Circuit invalidated a patent claim for failing to enable the full scope of the claimed invention. In particular, the claim contemplated six (6) combinations based on two factors. The first factor had two options. The … [Read more...]
Components described as important can narrow scope of patent claims
Components, parts and aspects of a device (i.e., invention) which are described as important or necessary to the invention can be used to limit the scope of the patent. When preparing a patent application, the goal is to describe an invention so that the important or necessary parts are highlighted but not necessarily described as important or necessary. In this way, aspects … [Read more...]