Correcting Patent Applications

Once filed, new matter cannot be added to a patent application.

Permitted correctiv amendments are obvious typographical errors, correcting drawing problems such as overly faint lines and correcting mis-numbering between the specification and the drawings, provided no new matter is added.

In other words, the content of a application cannot be corrected by amendment. A content correction requires the filing of a continuation-in-part application, which is known as a C-I-P or CIP application.

A provisional patent application cannot be corrected in a manner.

More about patent applications at the USPTO website at www.uspto.gov and my website at www.noreklaw.com

USPTO 2006 Statistics

In 2006, the patent application allowance rate continued its downward creep, down to 54%.

In 2006, patent examiners completed 332,000 patent applications in the year, which means about 180,000 applications were approved, and about 152,000 were not.

By not-approved is meant the application remained rejected after completion of the prosecution stage. A rejection on the first Office Action merely kicks off the prosecution stage.

Trade Secrets and Their Risks

Trade secrets have a potential of unlimited protection time-wise. But they have their own unique risks.

If the trade secret can be discovered by examination of the product or service, trade secret protection is worthless. Even full-force reverse engineering is a legitimate business technique against which you have no complaint recognized in the law.

If the trade secret is discovered by a failure to maintain sufficient secrecy controls, trade secret protection is lost.

If the trade secret is independently re-invented by a third party, trade secret protection is lost. They might even be able to obtain patent rights thereon.

These are risks that can, and sometimes should, be taken. An independent professional opinion, however, may be prudent before the risks are taken.

More about trade secrets, patents and other intellectual property areas on my website at www.noreklaw.com

IP vs Patent Attorney?

Not an infrequent question, namely what is the difference between an intellectual property (IP) attorney and a patent attorney?

Answer is simply that patents are intellectual property (in fact the king of intellectual property) and so a patent attorney is an intellectual property attorney, but not all intellectual property attorneys are patent attorneys.

More - the phrase intellectual property only came into use sometime in the 1980s. The various professional associations then were titled patent associations, although some members practiced only trademark or copyright or trade secret law. I think they started up for patent attorneys and later admitted attorneys in the other areas, but I could be wrong here.

Any attorney licensed to practice law in any state can practice in these other IP areas. Not so with patents.

Practicing before the USPTO in patent matters requires a registration, and eligibility to even attempt being registered requires at least a significant undergrad background in the physical sciences. Yes, us patent attorneys are also engineers, or chemists, or physicists etc.

So many attorneys say they are IP attorneys who will never get close to a patent application because they are not eligible for registration as a patent attorney.

Have I straightened out this issue? (I am a chemist with math/physics minors.)

Trademark Oppositions - Overview and Timing

All applications for registration of a mark on the Principal Register that have passed the examination stage are published for opposition.

The publication opens a thirty-day window period for filing a Notice of Opposition, or a request to extend the time period for so doing.

A time extension granted to one party cannot be used by another party.

Upon the filing of a timely and sufficient Notice of Opposition, an inter partes Opposition proceeding will be declared by the TTAB (Trademark Trial and Appeal Board).

Publication: The publication of an application for registration is actually printed in the Official Gazette. The date of publication, however, and all relevant information, is available on the USPTO's website at www.uspto.gov. The publication date is critical information. The publication opens a 30 day window for filing a Notice of Opposition or a time-extension request. The date of publication is posted on the website upon its assignment, ahead of actual publication.

Requests for Extensions of Time to Oppose:
Must be made in writing.
Must identify the potential opposer with reasonable certainty.
Must be made prior to termination of the thirty day window period, or prior to termination of extended period.
Must in combination come to no more than 90 days unless upon consent or stipulation of applicant (see below).

Extensions Restricted to Requester: A grant of a time extension runs only to the potential opposer who filed the request. Each potential opposer must seek their own time extension.

Practical Extension Practice: A potential opposer can (a) first request a 30 day extension, and then request an additional 60 days, or (b) first request 90 days. Good cause must be shown except on a first request for just 30 days.

Timeliness Critical: Time and timing are critical here. No one can use another's time extension. No one can rely on another's opposition. Further, a cancellation proceeding against an issued registration is not an equivalent because the burden of proof is shifted.

More on trademark oppositions at the official USPTO website www.uspto.gov and my website, particularly at www.noreklaw.com/tmoppositionsentry.htm

Patent Requirements - Nonobviousness

To be patentable, the subject matter must be useful, new and nonobvious.

The nonobvious condition on a patent grant is set out in 35 U.S.C 103. This condition is outlined below.

Under the statutory provision, a patent may not be obtained if:
- the differences
- between the subject matter sought to be patented and
- the prior art
- are such that
- the subject matter as a whole would have been obvious
- at the time the invention was made
- to a person having ordinary skill in the art to which said subject matter pertains.

A rejection on obviousness either
- nodifies a prior art reference or
- combine two or more prior art references.

The term "obvious" applies to this modification/combination. If the modification/combination is obvious, then the rejection is proper.

To determine if a modification/combination is obvious, it must meet three basic criteria.

First, there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings.

Second, there must be a reasonable expectation of success.

Finally, the prior art reference (or references when combined) must teach or suggest all the claim limitations.

More information in the MPEP section 2142. This is the Manual of Patent Examination Procedures, and a copy can be downloaded at the USPTO's website at www.uspto.gov

Hyperlinking

Hyperlink only with permission granted.

Most website pages have content protected by copyright. Facts embodied in content are not subject to copyright protection, while the authorship is. Via copyright protection, the copyright holder has the exclusive right to make copies of the work and to distribute copies of the work, among other exclusive rights.

Hyperlinking to another's website, particularly to an internal page within the website, is probably a distribution of a copy of a protected work without permission.

On the practical level, some website owners have a strong preference for site-entry through the pages it selects.
Even websites operated by departments and agencies of the federal government want hyperlinkers to clearly advise users that the link leads to a government page, and not one of their own.

Hyperlinking to a website's entry page is still an issue in flux. Most website owners want the publicity, or we wouldn't be out on the Internet. Delighted with some of such hyperlinks, but not comfortable with others. The jury is still out.

More info on copyrights at the U.S. Copyright Office's official website www.copyright.gov and on my website www.noreklaw.com