Anticipate This!™ | Patent and Trademark Law Blog

They Invented What? (No. 123)

Posted in They Invented What? by Jake Ward on December 17, 2008

U.S. Pat. No. 7,258,592:  Santa Claus visit kit.

JW Note:  Wishing a Happy Holidays to all!  See you in 2009!


What is claimed is:

1. A kit for creating an illusion that suggests a Santa Claus visit in a premises, said kit comprising:
         a) items revealed to a child audience comprising
                    i) a displayer Christmas diorama that, when assembled, at least partly bounds a region in which small items can be placed, said diorama having a plurality of panels, a first image being imprinted on one of said panels;
                    ii) amusement items for use by at least a member of said child audience in carrying out steps that said child audience is invited to believe will assist Santa Claus in making said visit; and
          b) items at least temporarily concealed from the child audience, said concealed items comprising means for making boot print resembling marks to mark an illusionary trail of Santa Claus in said premises and a card having a second image, the second image being similar to the first image but also containing a representation of Santa Claus.


MPEP 1126: Applications That Publish After the Patent Issues.

Posted in Practice Commentary by Jake Ward on December 16, 2008

An interesting practice note we thought we’d share.  Per MPEP 1126:

The publication fee set forth in 37 CFR 1.18(d) must be paid in each application published (or scheduled to be published) under 35 U.S.C. 122(b) before a patent will be granted on the application. . . .

Applicant is required to pay the publication fee to avoid abandonment of the application even if the application has not yet been published at the time when the publication fee is due. The Office will continue with the pre-grant publication process until a patent actually issues. This is because there are many instances in which the Office mails a notice of allowance in an application but the application does not issue as a patent in regular course. Therefore, the Office will not discontinue the pre-grant publication process until a patent has actually issued. Since the Office cannot discontinue the pre-grant publication process during the last two to four weeks of the publication process, this will result in a few applications being issued as patents and subsequently being published as patent application publications. The Office will refund the publication fee (if paid) if the application is not published as a patent application publication, but will not refund the publication fee if the application is published as a patent application publication, even if it is published after the patent issues

Accordingly, applicant may file a request for a refund of the publication fee after 4 weeks from the issue date of the patent if the application did not publish.  A request for refund filed before 4 weeks from the issue date is premature and will be disregarded. Requests for a refund of the publication fee should be directed to the Pre-Grant Publication Division of the Office of Publications at Mail Stop PGPUB.

(Emphasis ours).

Inventive Step Blog.

Posted in General Commentary by Jake Ward on December 16, 2008

There is a new patent blog on the scene, dedicated to a discussion of patent law issues and strategies.  The blog is titled Inventive Step and is authored by registered patent attorney Matthew R. Osenga, from Richmond, Virginia.

We have been reading Inventive Step posts over the past week or so, and Matt has provided some very matter-of-fact commentary related to the state of the patent practice in the United States.  We especially enjoyed the posts Is the Patent Office Against Patent Applicants? and Patent Allowance Rate Continues to Drop.  The first summarizes the extent to which the USPTO’s current administration has seemingly antagonized the Patent Bar over the past few years, and the latter notes the historically low allowance rates presently at the USTPO.  (See below graph ).


See also this earlier and related AT! post commenting on the plummeting allowance rates at the USPTO. 

We’d certainly recommend taking a look at Inventive Step as part of your daily blog read (should you be into such joyful activities)!

Anticipate This!™ | Patent and Trademark Law Blog Milestone.

Posted in General Commentary by Jake Ward on December 11, 2008

We know keeping track of hit counts is lame.  Blah blah blah.  Well, lame we shall be in congratulating ourselves on reaching a blog milestone:  100,000 hits!  Many thanks to all of our readers who make this patent law blog a success.  We hope to continue providing our unique blend of commentary for many years to come.

Thanks also to our fellow legal bloggers who have provided links, either specifically to content or generally as professional courtesy.   A list of the top ten (10) legal blog referrers to the Anticipate This! ™ | Patent and Trademark Law Blog is provided below:

1.  The 271 Patent Blog

2.  Patently-O

3.  The Patent Prospector

4.  The Fire of Genius

5. Patentably Defined

6. IP Watchdog  

7. Likelihood of Confusion

8. Legal Antics

9. Promote the Progress

10. The Invent Blog

Doesn’t seem like so long ago that we surpassed the 1,000 hit mark.  Here is to the next 100,000 hits (and beyond)!

They Invented What? (No. 122)

Posted in They Invented What? by Jake Ward on December 10, 2008

U.S. Pat. No. 4,432,545:  Non-lethal cock fighting system.



What is claimed is:

1. Apparatus for conducting and scoring cock fights between two combating birds, said apparatus comprising, in combination:
          (a) individual switch means mounted upon each leg of each bird in place of or in covering relation to the natural spur, each of said switch means including a member movable along the axis of the natural spur in response to a blow struck substantially along said axis and by a distance commensurate with the force of said blow;
          (b) means for generating an individual electrical signal upon each movement of said member by at least a minimum increment of said distance, said signal having a parameter distinctive to each of said switch means and to a plurality of distinct increments of said distance;
          (c) means attached to the skin of each bird in a posterior area below the tail feathers where the feathers have been removed for transmitting said individual signals to a location remote from said birds;
          (d) signal processing means at said remote location for receiving said transmitted signals and for indexing a counter associated with each of said signal parameters in response to reception of each individual signal of said parameter; and
          (e) display means providing a visual indication of the accumulated count of each of said counters, thereby scoring the fight according to the number of blows of each increment of force struck by each leg of each bird.


Not So Fast. New BPAI Rules Delayed For OMB Review.

Posted in Practice Commentary by Jake Ward on December 9, 2008

Per this last minute notice in the Federal Register (to be published tomorrow, December 10th):

SUMMARY: On June 10, 2008, the United States Patent and Trademark Office (Office) published the final rule that amends the rules governing practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte patent appeals.  The final rule states that the effective date is December 10, 2008, and that the final rule shall apply to all appeals in which an appeal brief is filed on or after the effective date. On June 9, 2008, the Office published a 60-Day Federal Register Notice requesting the Office of Management and Budget (OMB) to establish a new information collection for BPAI items in the final rule and requesting public comment on the burden impact of the final rule under the provisions of the Paperwork Reduction Act (PRA).  On October 8, 2008, the Office published a 30-Day Federal Register Notice stating that the proposal for the collection of information under the final rule was being submitted to OMB and requesting comments on the proposed information collection be submitted to OMB.  The proposed information collection is currently under consideration by OMB.  Since the review by OMB has not been completed, the Office is hereby notifying the public that the effective and applicability date of the final rule is not December 10, 2008.  The effective and applicability dates will be identified in a subsequent notice.

(Emphasis ours).

Our post reminding practitioners about the rules taking effect on December 10th may be found here.

Practice Reminder – New BPAI Rules Take Effect December 10, 2008.

Posted in General Commentary, Practice Commentary by Jake Ward on December 7, 2008

As a reminder to all practitioners preparing Notices of Appeal and Appeal Briefs for appeals before the
Board of Patent Appeals and Interferences (BPAI), the new BPAI rules take effect December 10, 2008.   See our original post concerning the BPAI rules change here

The rules as published may be viewed at the USPTO website here.  The USPTO has also created a list of Frequently Asked Questions (FAQs) about the new BPAI rules, as well as checklists to ensure appeal briefs and reply briefs are following the new format.  These documents can be found here.

New Patent Searching Tool – Setrue Patent Search.

Posted in Practice Commentary by Jake Ward on December 6, 2008


Jacob Zoarets, founder and CTO of Transformer Software Ltd, recently wrote to inform us of his new “free” patent search tool called the Setrue Semantic Patent Search Engine.   The Setrue website states that the search tool includes features such as:  semantic natural language query capabilities; query auto-complete suggestions; detailed USPTO class directory structure enabling a one click segmentation of search results to a specific USPTO patent class; clustering of search results by USPTO classes; clustering of search results by years; clustering of search results by assignees; similar patents segmentation; dynamic weighting of search terms; and much more. 

We’ve had an opportunity to splash around on the Setrue website, and found the advanced features such as the “similar patents” function to be particularly interesting.  However, be aware that the Setrue semantic patent search engine is a free patent search engine for non-commercial usage only.  If you are a law firm, a private patent attorney, a patent search agency, a litigation attorney, or a corporation, or if you are planning to use Setrue semantic patent search engine commercially, the website asks that the Setrue sales team be contacted first to purchase a commercial license.

The basic Setrue search tool is available here, with advanced search capabilities available here

Other free search sites that we recommend can be found at our Practitioner & Inventor Resources page.  Check them out!