Differences between a provisional and nonprovisional patent application
The primary difference between a provisional application and a nonprovisional application is that the provisional patent application is never examined whereas the nonprovisional patent application will eventually be examined. As such, the primary reason that one might want to file a provisional patent application instead of a nonprovisional patent application is to delay long-term examination […]
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 nonprovisional […]
Preparing Drawings for a Utility Patent Application
The drawings for a utility patent application are one of the most important parts of the patent application. The drawings are a quick, easy way to establish some understanding of what to expect if one were to spend time reading the utility patent or application. Patent rules also require the drawings show what is being […]
Limits on trade dress protection when also securing a utility patent
Types of intellectual property rights Four main types of intellectual property rights are used to protect products: patents, trademarks, trade secrets and copyrights. The product may be protected by one or more of these types of intellectual property rights. For example, a design patent may be sought for the ornamental look of the product. Simultaneously, […]
Transitional phrase in a claim determines scope of patent protection
A patent claim has three major sections, namely, a preamble, a transitional phrase and a body. The body of the claim contains the elements which define the scope of patent protection as defined by that claim. The transitional phrase indicates whether incorporating other elements or components in an accused infringing device other than those elements […]
Claim scope negatively impacted due to deleted info from provisional application
The words that one uses in describing the invention in a patent application have significant impact as to the claim scope in any patent that might mature from the patent application. In MPHJ Technology Investments, LLC v. Ricoh Americas Corporation (Fed. Cir. February 13, 2017), a non-provisional patent application which was identical to its corresponding […]
Functional language invalidates patent claim
In AGIS, Inc. v. Life360, Inc. (Fed. Cir. July 28, 2016), AGIS (patent owner) held a patent directed to a cellular communication system that allows multiple cellular phone users to monitor the location of others and their status via a visual display. Symbols generated on the visual display (e.g., user’s cellular phone) represented the locations […]
Avoid disparaging prior art in patent application
Updated: January 20, 2022 Disparaging the prior art in the patent application may narrow patent claims When a patent application disparages a prior art technique, feature, aspect, or apparatus, the court may assume that there is a disclaimer of the disparaged subject matter and may then narrow the scope of the claims to exclude the disparaged […]
Claim Drafting Tip: Avoid means plus function claims
Bottom line: A claim with a means plus function limitation may invalidate the claim if the claim and the specification are not properly drafted. As such, it may be prudent to avoid language that implicates means plus function such as solely functional language and the operative trigger term “means.” Moreover, this case (Media Rights Technologies […]
Patent Drafting Tip: Alternative embodiments create prior art
Bottom line: An application for patent generally focuses on the preferred embodiments of the invention but it may be prudent to also include alternative non-preferred embodiments. One reason for including these alternative embodiments is to provide a buffer zone around the preferred embodiments of the invention to prevent others from obtaining a patent on these […]
How NOT to write the background section of a patent application?
The background section of a patent application is supposed to describe the current state of the art. The background section might describe the problem associated with the current technology. For example, the current technology is too slow, too expensive, not easy to use. Your invention might solve one or more of the problems. The best […]
How to write a broad patent application?
Inventors think that a broad patent (one that covers everything from A to Z) is one that describes the invention in generic terms without describing the particulars of the invention. Inventors will describe their inventions to me by describing the overall goals and the overall mechanisms that achieve those overall goals. Their goal is to […]
Expedited examination at the USPTO
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.
Design patents: pros and cons
Basic types of patents Three types of patents are issued by the United States Patent and Trademark Office. 1. Utility patent; 2. Design patent; and 3. Plant patent (not discussed here). Basic differences between utility and design patents Each of these types of patents cover different aspects of an invention. Utility patents protect functional features. […]
Broad claims pose enablement issues
Law on enablement requirement A patent specification must enable one of ordinary skill in the art to make and use the full scope of the claimed invention without undue experimentation under 35 USC 112, first paragraph. Otherwise, such claim is invalid for failing to satisfy the enablement requirement. The enablement doctrine prevents both inadequate disclosure […]
Request for non-publication of a patent application
Non Publication Requests A non publication request is a request by the patent applicant to not publish a non provisional patent application. By default, every non provisional patent application is published 18 months after the filing date of the patent application. The non publication request prevents the publication. Benefit of publication The benefit of publication […]
Means plus function without the MEANS trigger
Means plus function language in a claim appears to be a broad form of claiming one’s invention. However, Congress by statute has limited the breadth of these types of limitations to those embodiments disclosed in the patent application which are linked to the means plus function limitation plus their equivalents. As a result, the means […]